Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 1 of 38 Page ID #:1574
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA - WESTERN DIVISION
`HONORABLE GEORGE H. WU, U.S. DISTRICT JUDGE
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`ANCORA TECHNOLOGIES, INC.,
`Plaintiff,
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` vs. Case No. CV 19-2192-GW
`CV 20-1252-GW
`TCT MOBILE, INC., et al
`Defendants.
`_______________________________________/
`
`REPORTER'S TRANSCRIPT OF
`MARKMAN HEARING
`THURSDAY, OCTOBER 15, 2020
`8:30 A.M.
`LOS ANGELES, CALIFORNIA
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`________________________________________________________
`TERRI A. HOURIGAN, CSR NO. 3838, CCRR
`FEDERAL OFFICIAL COURT REPORTER
`350 WEST FIRST STREET, ROOM 4311
`LOS ANGELES, CALIFORNIA 90012
`(213) 894-2849
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`UNITED STATES DISTRICT COURT
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA - WESTERN DIVISION
`HONORABLE GEORGE H. WU, U.S. DISTRICT JUDGE
`
`ANCORA TECHNOLOGIES, INC.,
`Plaintiff,
`
` vs. Case No. CV 19-2192-GW
`CV 20-1252-GW
`TCT MOBILE, INC., et al
`Defendants.
`_______________________________________/
`
`REPORTER'S TRANSCRIPT OF
`MARKMAN HEARING
`THURSDAY, OCTOBER 15, 2020
`8:30 A.M.
`LOS ANGELES, CALIFORNIA
`
`________________________________________________________
`TERRI A. HOURIGAN, CSR NO. 3838, CCRR
`FEDERAL OFFICIAL COURT REPORTER
`350 WEST FIRST STREET, ROOM 4311
`LOS ANGELES, CALIFORNIA 90012
`(213) 894-2849
`
`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 2 of 38 Page ID #:1575
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`APPEARANCES OF COUNSEL:
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`FOR THE PLAINTIFF:
`BROOKS KUSHMAN PC
`BY: JOHN P. RONDINI
`MARC LORELLI
`Attorneys at Law
`1000 Town Center 22nd Floor
`Southfield, Missouri 48075
`mlorelli@brookskushman.com
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`FOR THE DEFENDANT:
`PERKINS COI LLP
`BY: KYLE R. CANAVERA
`JOHN P. SCHNURER
`Attorneys at Law
`11452 El Camino Real Suite 300
`San Diego, California 92130
`jschnurer@perkinscoie.com
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 3 of 38 Page ID #:1576
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`LOS ANGELES, CALIFORNIA; THURSDAY, OCTOBER 15, 2020
`8:30 A.M.
`--oOo--
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`THE COURT: Let me call the matter of Ancora
`Technologies -- let me just ask the court reporter, do you want
`to take a short break?
`Let me take a five-minute break.
`(Recess.)
`THE COURT: All right. Let me call the matter of
`Ancora Technologies versus TCT Mobile.
`For the, plaintiff we have?
`MR. LORELLI: Marc Lorelli on behalf of plaintiff.
`THE COURT: All right. And for the defense?
`MR. SCHNURER: John Schnurer and Kyle Canavera on
`behalf of the defendants.
`THE COURT: All right. We are here for a Markman
`construction hearing.
`I issued a tentative on this, I presume both sides have
`seen it?
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`MR. LORELLI: Yes.
`THE COURT: You need to identify yourself when you
`speak. Who is speaking?
`MR. LORELLI: Marc Lorelli from plaintiff.
`THE COURT: For the defense?
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 4 of 38 Page ID #:1577
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`MR. SCHNURER: John Schnurer for defendant, and yes,
`we read it as well.
`THE COURT: Does somebody want to argue something?
`MR. SCHNURER: John Schnurer on behalf of the
`defendants, yes, we would.
`We would like to address the Court's tentative
`constructions for the claim license record, memory of a BIOS,
`and the language of Claim 8.
`And I will address license record, while my colleague,
`Kyle Canavera, will address memory of the BIOS and Claim 8.
`THE COURT: All right. Let me indicate to both
`counsel, you kind of sound muffled. Are you using a land line
`or are you using some sort of cell phone type of thing?
`MR. SCHNURER: This is John Schnurer for defendants.
`I'm using a land line.
`THE COURT: Well, maybe it's your voice.
`MR. SCHNURER: Okay. Is it any better?
`THE COURT: A little bit better.
`MR. SCHNURER: I'm really close to my phone.
`So, I will address license record, if I may proceed, Your
`Honor?
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`THE COURT: Wait just a second. Let me just ask the
`parties, when you refer to something in the tentative, give me
`the page number, because that will make it easy for me.
`MR. SCHNURER: Correct, Your Honor, and license
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 5 of 38 Page ID #:1578
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`record is on page 9 through page 12 of the tentative.
`THE COURT: All right. Go ahead.
`MR. SCHNURER: Thank you, Your Honor.
`So when we looked at the tentative, we realized perhaps we
`did not do a good job explaining our concern with Ancora's
`proposed construction which appears the Court barred mostly as
`its tentative.
`What is fundamental here in this claim -- with this
`tentative, it actually reads out the scope of the claim and the
`purpose of the invention, because I want to focus on license
`record.
`It's not devoid of the context in which it appears in the
`claim.
`If you look at Claim 1, the license record of Claim 1 is
`that record that is stored in the erasable nonvolatile memory.
`The patent makes the distinction between the license
`record and the erasable nonvolatile memory to the license
`record associated with the program in volatile memory. That is
`the whole point of this invention.
`The whole point of this invention is so that when a user
`wants to use a program, and that is put into volatile memory
`during operation, for example, Microsoft Word, that the license
`record information associated with the program in volatile
`memory is extracted and a license record is formed, and that
`information is then compared through a verification process to
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 6 of 38 Page ID #:1579
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`the license record or records stored in the erasable
`nonvolatile memory.
`And that compares -- then, the result of that then
`determines that the match, meaning the license record of the
`volatile memory -- the license record of the program in
`volatile memory matches the license record or records in the
`erasable nonvolatile memory, that then means it gets an action.
`That means that the program that resides in the volatile memory
`is authorized to be used to operate to run.
`The patent uses these terms synonymously, it's been
`licensed.
`If they do not match, meaning the license record that is
`stored in the erasable nonvolatile memory when it's compared
`with the license record formed from the information in the
`program residing in volatile memory, then it is not authorized
`to be operated or performed.
`So the wording with the Court's tentative construction is
`that it divorces or conflates the meaning of license record in
`the context of that being stored in the erasable nonvolatile
`memory and associates it with the license record with the
`program that resides in the volatile memory, and thereby,
`negates the point of this invention.
`It is to ensure -- if I turn on that my laptop, and I want
`to run Microsoft Word, that there is this verification process
`that occurs with the license record storage, erasable
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 7 of 38 Page ID #:1580
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`nonvolatile memory that indicates that by Microsoft Word
`software program, it's licensed or it's not.
`So I want to refer you basically and when look at the
`claim that we're talking about the license record of the
`erasable nonvolatile memory and that the patent makes the
`distinction.
`The easiest way to do this is -- I want to refer you to
`the summary of the invention section which talks about the
`license record that is stored in the nonvolatile memory, and
`that is distinct from the license record that is formed based
`off of information from the program that resides in the
`volatile memory.
`If I refer you just to Column 1, which the Court points
`to, but I feel like the Court just points to all of the
`instances in which license record is mentioned without making a
`distinction, which is an important distinction between -- is
`this the license record that is stored in the erasable
`nonvolatile memory, or is the license record associated with
`the program in the volatile memory?
`If you look at Column 1, line -- it looks to be 53 through
`57, and in fact, continues on through the end of that column,
`this is talking about the license record that is stored in
`erasable nonvolatile memory.
`THE COURT: Let me stop you, and let me ask this
`question: If it's so important that the term "license record"
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 8 of 38 Page ID #:1581
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`has two different meanings, why are you using the same term
`without indicating that there is two different meanings?
`MR. SCHNURER: Okay. That is why I think what
`probably should have been construed was the phrase of the
`clause in which the license record appears.
`The phrase in which the term "license record" appears, is
`with respect to that license record stored in the erasable
`nonvolatile memory.
`That is the record that indicates that -- these are the
`programs that are licensed to be run or operated or used on the
`specified computer. That is critical. And because of that,
`that indicates what information is in that license record.
`At a minimum, it indicates that these programs associated
`with the license record in the erasable nonvolatile memory are
`able to be used.
`That is different from the past discussion in Column 5 and
`Column 6 with respect to the program that resides in the
`volatile memory.
`Columns 5 and 6, it talks about the various information
`that may be intended to the program that resides in the
`volatile memory with respect to its license record.
`But the whole point of this invention is determined, okay,
`you have a program residing in volatile memory, we need to make
`sure that you would actually like us to operate that on the
`specified computer.
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 9 of 38 Page ID #:1582
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`So yes, that is my worry here. The term "license record"
`in the context of this claim refers to that license record that
`is stored in erasable nonvolatile memory.
`And in your figure that you provide in your tentative,
`Figure 1, that is the license records, 10, 11, and 12 shown in
`the second nonvolatile memory 5, which is disclosed to be the
`erasable nonvolatile memory.
`The volatile memory in Figure 1, which shows the license
`program, that is the license program that resides in the
`volatile memory, and it does have fields like the program
`fields that are used to form the license record associated with
`that program in the volatile memory. But that doesn't mean
`that it's actually licensed to be used on a specified computer,
`that is the point of this invention.
`The point of this invention is to do that verification to
`ensure that this version, a marked-up word that I am trying to
`use on my computer is actually licensed to be used.
`The way that is done is by pulling up the record -- the
`license record from the erasable nonvolatile memory, looking at
`all those records, and doing a comparison, and saying no, I
`don't see this, there is no comparison, you are not authorized
`on the version of Microsoft Word, or there is a match, and that
`indicates that you are licensed to operate this program.
`So the way the tentative reads, it conflates the license
`record that is stored in the erasable nonvolatile memory with
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 10 of 38 Page ID #:1583
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`the license record associated with the program residing in
`volatile memory.
`And so when you insert -- and this is what I typically
`like to do -- when you insert that definition in the tentative
`within the claim, it renders the claim nonsensical, because how
`I understand the Court's tentative is that the data -- let me
`just read the Court's tentative: A record from a license
`program with information for verifying that license program,
`when you insert that in the claim, the license program appears
`to be referring to the program residing in volatile memory, and
`that it's for verifying that program that is residing in
`volatile memory.
`You are verifying the program in volatile memory with
`information associated with that program in volatile memory.
`That is not ensuring -- that reads out fundamentally the
`purpose of the invention which is, no, no, no, you are
`comparing the license record associated with the program that
`is residing in the volatile memory with the license record that
`is claimed that is stored in nonvolatile memory -- erasable
`nonvolatile memory.
`And I just want to point -- just the point in the summary
`of the invention where that makes that distinction, so back to
`Column 1, 53 all the way to the end, that refers to the license
`record that is stored in the erasable nonvolatile memory.
`This portion of the patent talks about this being the
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 11 of 38 Page ID #:1584
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`initial license establishment procedure. That is the point of
`this.
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`When a manufacturer bundles programs with its laptop, for
`example, these are licensed and this initial license
`establishment procedure corresponds to using the agent to set
`up the verification structure so that the license record is
`stored in the erasable nonvolatile memory.
`That is where the authority associated with these programs
`that are licensed for the specified computer is stored.
`Now, turning your attention --
`THE COURT: All right.
`Let me stop you. Let me hear from the plaintiff.
`What is your response to that?
`MR. LORELLI: Yes, Your Honor. I am thoroughly
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`confused.
`I have dealt with this patent for many years, and I have
`never heard such an argument -- such an argument that wasn't in
`their claim construction briefing.
`There is one license record and it is stored in the
`erasable nonvolatile memory in the BIOS.
`It, of course, comes from the program, that is where you
`get it for authorization.
`I have never heard this before, and honestly, jumping
`around and saying that there is two license records is very
`confusing, because it's not accurate.
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 12 of 38 Page ID #:1585
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`THE COURT: All right.
`MR. SCHNURER: Your Honor, may I comment? This is
`John Schnurer, again.
`I was trying to get to the point where the patent then
`makes a distinction between the license record that is stored
`in erasable nonvolatile memory with a license record associated
`with the program in volatile memory.
`I just want to turn your attention to the summary of the
`invention. This claim, as it is interpreted -- Claim 1, as it
`is interpreted by the Court, must read on this summary of the
`invention.
`And here in Column 2, where it talks about the license
`associated with the program that resides in the volatile memory
`is that -- let me make sure I got it -- at Column 2, lines 20
`to 26, for example, where it talks about the verification
`process.
`And it says: If, on the other hand, the sought encrypted
`data record is not found in the E-squared PROM database -- that
`is the license record that is stored in the erasable
`nonvolatile memory -- this means that the program under
`question -- and this is referring to the program in volatile
`memory -- is not properly licensed and appropriate application
`define action is invoked. That is akin to the acting step of
`Claim 1.
`So when you go look at the program that resides in the
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 13 of 38 Page ID #:1586
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`volatile memory, it refers to that program -- every program has
`license record information associated with it, but the point of
`the invention is to confirm that -- the program that resides in
`volatile memory is in fact licensed to operate on the computer.
`I refer to Column 5 and 6, this is where it talks about
`what is associated with the program that resides in volatile
`memory.
`Here, in Column 5, it makes a distinction.
`At Column 5, line -- starting at 25, it talks about the
`second nonvolatile memory, and includes license record area.
`That is the license record in the erasable nonvolatile
`memory of Claim 1, and it just said -- that is all it said. It
`contains three records, 10 to 12 that is shown in Figure 1.
`Now, with respect to the volatile memory, this is the
`claim program that resides in volatile memory, it makes the
`distinction, a license program 16 having license record fields
`associated thereto, and then it talks about what fields are
`associated with a license record of the program in volatile
`memory.
`That is distinct in the license record that resides in the
`erasable nonvolatile memory.
`What is the purpose of this?
`The purpose of this, if you go to Column 6, tells you when
`you do the verification step, line 29, it does -- at line 29
`through 37, it talks about the verification step that is in
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 14 of 38 Page ID #:1587
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`Claim 1, and how that is performed.
`By comparing the license record associated with the
`program in volatile memory with the license record stored in
`erasable nonvolatile memory, and if there is a match, that
`means the program that is in volatile memory is licensed to
`operate the computer, and therefore, the acting spec is
`implemented.
`THE COURT: Let me hear plaintiff's response to that
`portion of his argument.
`MR. LORELLI: Yes, Your Honor.
`Claim 1 is very clear. There is not two license records.
`There is one license record.
`Everybody briefed this issue as that license record.
`The one that is -- it's stored in the erasable nonvolatile
`memory of the BIOS.
`This notion of two license records and a match is not
`something that is in Claim 1, nor can ever be in Claim 1.
`MR. SCHNURER: So Your Honor, John Schnurer speaking
`again. I agree.
`What is expressly written in Claim 1 is a single license
`record in erasable nonvolatile memory.
`But as construed by the Court, it is referring to the
`license record to the program in volatile memory. That is the
`problem with the tentative construction.
`It is not construing what license record that is stored in
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 15 of 38 Page ID #:1588
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`erasable nonvolatile memory means.
`So that is my problem here, it says -- the tentative is a
`record from a license program.
`I believe you are referring to the program in the volatile
`-- that resides in the volatile memory with information for
`verifying that program residing in volatile memory. That is
`the problem.
`If the Court's intent is that the license record erasable
`nonvolatile memory is a record from a program that is licensed
`to operate on the computer with information for verifying that
`a program that resides in the volatile memory is licensed, then
`that would make sense. That would comport with what the
`invention is about.
`But by not making that distinction between your first
`instance of license program with your second instance of
`license program, you are equating them as opposed to clarifying
`the distinction.
`So to me, license program, that sentence has to be changed
`to refer to the program that resides in volatile memory to make
`this construction comport with what the invention is and truly
`what the claim covers.
`THE COURT: I'm a little bit confused.
`MR. SCHNURER: The verification step, Your Honor, is
`verifying the program that resides in the volatile memory to
`confirm whether it is licensed or not.
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 16 of 38 Page ID #:1589
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`You are not using information that currently resides -- to
`compare information with the same information, that is no
`comparison and that results in nothing.
`THE COURT: Well --
`MR. SCHNURER: So the Court, in the tentative it
`refers to a lot of instances in the specs on page 11, like at
`154 to 55, that refers to the erasable nonvolatile memory
`license record.
`At 161 to 162, again that refers to erasable nonvolatile
`memory.
`At 220, that refers to the program that resides in the
`volatile memory.
`At 228, that refers to the program that resides in
`volatile memory.
`At 230, that refers to erasable nonvolatile memory.
`THE REPORTER: He is speaking way too fast and I
`cannot understand him.
`THE COURT: Let me stop. My reporter is indicating
`to me that you are speaking too fast, so you have to slow it
`down.
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`MR. SCHNURER: Okay. Sorry, Your Honor and sorry,
`court reporter.
`At 236, your reliance on that refers to the program that
`resides in volatile memory.
`So the word here is there is a conflation of these
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 17 of 38 Page ID #:1590
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`instances as if it has the same meaning of what it is not.
`The claim terms that are in dispute here is the license
`record that resides in the erasable nonvolatile memory.
`We're not construing what license record associated with
`the program that resides in volatile memory, that is not part
`of the claim, because that is the point of the invention.
`You may not have -- you may have information residing with
`the program that resides in volatile memory that indicates that
`is not licensed to be run on the computer. That is the point
`of this invention.
`So, these -- I feel like all of the these citations to
`instances in the specification that refers to the program that
`resides in volatile memory and the license field information,
`that does not indicate what license record that resides in the
`erasable nonvolatile memory means.
`No, there is other portions in the specs which I just
`pointed out to you that pertains to that. And at minimum, the
`license record that is stored in erasable nonvolatile memory
`has to have information that indicates that the -- that a
`program is licensed to operate on that specified computer.
`That is the point of the invention.
`THE COURT: I'm still confused with your position.
`I think it's because maybe you were right in the first
`sense that what we should not be construing is the term
`"license record" in and of itself.
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 18 of 38 Page ID #:1591
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`We should be, perhaps, attempting to give a construction
`to the broader language.
`MR. SCHNURER: I agree with that, Your Honor.
`What we offered as the construction was simply that so
`when you inserted it into the overall claim element, because
`the other language of the claim element indicates this is the
`license record that is stored in erasable nonvolatile memory,
`and in the verification process, that information is used to
`compare it with the information with the program residing in
`volatile memory to verify whether that program that is residing
`in volatile memory is licensed to be used in the specified
`computer.
`
`THE COURT: Let me stop you. The problem I also
`have is that the defendant's proposed construction doesn't deal
`with this particular problem.
`The defendant's proposed construction simply is
`information indicating a right to use the program.
`MR. SCHNURER: Well, the information -- because, to
`me, I thought the Court's point was the specs point to a right
`to operate, a right to run, or the right to use.
`I just pulled up the definition of license from Oxford,
`and it says: A permit from an authority to own or use
`something to a particular thing or carry on a trait.
`Our point, instead, perhaps it is narrow, but it is
`information indicating a right to run, a right to operate, a
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 19 of 38 Page ID #:1592
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`right to use a particular program on a computer.
`That is what the point of the invention is to confirm that
`the instance of the program that you are trying to run is in
`fact licensed to be operated on your computer.
`And so, we are just focused on license record in the
`context of that claim element without construing or inserting
`or bringing in, importing limitations elsewhere in the claims.
`And the Court's tentative construction imports limitations
`that are found elsewhere in the claim.
`For example, the verifying -- verifying that license
`program.
`That is the verification step of the program that resides
`in the volatile memory.
`And my other concern is when you just look at the Court's
`construction, the tentative, "records not construed."
`The only thing that is construed in the Court's tentative
`is license of the term license record, and it adds all this
`extra language that's all you can -- regarding license, and it
`results when you insert into the claim, to me, a claim that
`doesn't make sense.
`THE COURT: All right. I will think about it.
`What else do people want to argue?
`MR. CANAVERA: Your Honor, this is Kyle Canavera for
`the defendants.
`We would like to argue the Claim 8 language next, which is
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 20 of 38 Page ID #:1593
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`on page 19 of the tentative.
`THE COURT: All right.
`MR. CANAVERA: Your Honor, our position on this just
`briefly is that when Claim 8 refers to more details about
`establishing license record, that those details don't limit
`anything because there was never an establishing license record
`step previously.
`In the tentative, the Court appears to -- the Court finds
`that the language is limiting.
`And the path the Court appears to follow to get there is
`to say that the Claim 6 language is what is being referred to.
`Claim 6 talks about establishing a license software
`program.
`Claim 8 talks about establishing a license record.
`Based on the legal citation the Court has provided in the
`tentative, our rough understanding is that the idea here is
`that while the language in Claim 6 and Claim 8 are not exactly
`the same, they seem to be referring to one another.
`I would just like to briefly show why that is definitely
`not the case in the context of this patent.
`If I could direct Your Honor's attention to the Column 6
`of the specification?
`THE COURT: All right.
`MR. CANAVERA: I'm going to point to lines 8 to 22,
`in particular.
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 21 of 38 Page ID #:1594
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`The establishing a license software program from Claim 6
`appears verbatim in Column 6, line 8.
`And as Your Honor can see in the context of that
`paragraph, this is a sub-step of the selecting -- selecting a
`program step.
`And Your Honor will probably recall that Claim 1 has the
`selecting a program set.
`So Claim 6 is referring to that establishing a license
`software program detail, Column 6, line 8.
`Claim 8's usage of establishing a license record is a
`completely different thing, that is Column 6, line 22.
`Your Honor will see this is establishing a license record
`includes -- and then it provides several details on that.
`The establishing a license record step in line 22 is never
`related to the establishing a license software program of
`line 8.
`The spec never says that the step at line 22 is a sub-step
`of the step at line 8. There is no way to get there from the
`specification, there is just two different steps.
`And yet, if one were to read the claim as the tentative
`appears to, is to say that establishing a license record is a
`further detail on establishing a licensed software program, the
`spec doesn't support that.
`This is illustrated, I think, in Figure 1.
`The Claim 6 language of establishing a license software
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`UNITED STATES DISTRICT COURT
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 22 of 38 Page ID #:1595
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`program and all of the stuff that comes after it in Claim 6 is
`referring to -- if Your Honor looks at volatile memory 6 right
`there in the middle of that diagram in the license program, and
`the elements 13, 14, and 15 are contents of a license record --
`in contents of a license record.
`The Claim 6 is talking about putting that there, putting
`that thing in volatile memory. Claim 6 specifically says that,
`establishing in the volatile memory.
`Claim 8, establishing license record, is talking about
`license records which Your Honor can see are enumerated 10, 11,
`12 in Figure 1 in the top right.
`The license records are established there in the second
`nonvolatile memory. That is what Claim 8 is.
`Claim 6 is a completely different thing. It is a
`completely different step.
`So when Claim 8 refers to establishing a license record,
`it's not just an inexact wording of Claim 6, it's a completely
`different thing.
`I think the Court gave some credence to this idea that
`Claim 6 refers to establishing license of a program, dot, dot,
`dot, wherein it includes contents used to form a license
`record.
`Contents used to form a license record is not the license
`record.
`Again, looking at Figure 1, 13, 14, 15, right in the
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 23 of 38 Page ID #:1596
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`middle, those are the referred-to contents used to form a
`license record. That is Claim 6.
`The license record are Items 10, 11, and 12, that is Claim
`
`8.
`
`So when Claim 8 is talking about this step, it's not
`giving more detail on what is being described in Claim 6.
`There is no basis for establishing license record in the
`claims -- never has been in the prosecution.
`This claim has always just recited more detail on
`something that was never claimed.
`Perhaps, they could have claimed it, they could have added
`it to a claim, you know, the method of Claim 1 further
`comprising establishing a license record.
`They didn't do that, and the path that the Court is trying
`to go down to fix that for them is controverted by the
`specification just by the language of the claims, and we think
`the Court should not go down that path.
`THE COURT: All right. Let me hear a response from
`plaintiff's counsel.
`MR. LORELLI: Yes, Your Honor.
`We believe Claim 6, as indicated, properly supports that
`establishing the license record program, which includes
`contents used to form the license record, certainly has an
`implicit antecedent basis for forming the license record, which
`is Claim 8.
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`Case 8:19-cv-02192-GW-AS Document 61 Filed 10/22/20 Page 24 of 38 Page ID #:1597
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`I have never seen a case -- nothing has been cited to us,
`where you just ignore a claim because it is perhaps one word or
`some misunderstanding.
`We haven't a seen a case that would even allow the Court
`to do -- to just say Claim 8 is non-limiting, which is what the
`defendant is asking you to do.
`THE COURT: All right. What else do people want to
`
`argue?
`
`MR. CANAVERA: Your Honor, this is Kyle Canavera for
`the defendants.
`The other term we would like to argue is memory of the
`BIOS, which is on page 12 of the tentative.
`THE COURT: Okay.
`MR. CANAVERA: Just as a brief refresher, the
`defendant's position is that -- as can be seen on page 12 -- is
`that there was a disavowal through prosecution.
`The Court's tentative does not adopt that, and the Court
`goes through this analysis
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