UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC
`Petitioner
`
`v.
`
`ANCORA
`Patent Owner
`
`
`
`Patent No. 6,411,941
`
`
`
`DECLARATION OF JON B. WEISSMAN
`
`
`
`
`
`
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`Apple Inc. Exhibit 1008 Page 1
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`

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`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Qualifications ................................................................................................... 1
`
`III. Materials Reviewed ......................................................................................... 5
`
`IV. Summary of Findings ...................................................................................... 5
`
`V.
`
`Legal Standards ............................................................................................... 7
`
`A.
`
`Claim Construction................................................................................ 7
`
`B.
`
`Obviousness ........................................................................................... 9
`
`C. Written Description ............................................................................. 12
`
`D.
`
`Indefiniteness ....................................................................................... 12
`
`VI. The ’941 Patent .............................................................................................. 13
`
`A. Overview of the ’941 Patent ................................................................ 13
`
`B.
`
`Prosecution History of the ’941 Patent ............................................... 17
`
`VII. Person of Ordinary Skill in the Art ................................................................ 18
`
`VIII. Claim Construction ........................................................................................ 19
`
`IX. The ’941 Patent is Indefinite ......................................................................... 21
`
`A.
`
`The Term “Agent” ............................................................................... 21
`
`1.
`
`2.
`
`The Term “Agent” Does Not Connote Definite Structure ....... 21
`
`The Claimed Agent Functions Are Not Linked to
`Structure in the Specification .................................................... 22
`
`X.
`
`Lack of Written Description .......................................................................... 22
`
`XI. Overview of Prior Art for the ’941 Patent ..................................................... 24
`
`
`
`i
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`Apple Inc. Exhibit 1008 Page 2
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`

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`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Hasebe ....................................................................................... 25
`
`DMI Specification ..................................................................... 27
`
`Chang ........................................................................................ 28
`
`Arbaugh ..................................................................................... 29
`
`Isikoff ........................................................................................ 30
`
`Shipman .................................................................................... 31
`
`Angelo ....................................................................................... 31
`
`XII. Claims 1-3, 5-14, and 16-17 of the ’941 Patent Are Obvious ....................... 32
`
`A. Hasebe in view of the DMI Specification Renders Obvious
`Claims 1-3, 5-14, and 16-17 ................................................................ 32
`
`1.
`
`’941 Patent, Claim 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: ............................................... 32
`
`(i)
`
`(ii)
`
`Step 1[a] – selecting a program residing in
`the volatile memory .............................................. 33
`
`Step 1[b] – 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 ............... 34
`
`(iii) Step 1[c] – verifying the program using at
`least the verification structure from the
`erasable non-volatile memory of the BIOS .......... 40
`
`(iv) Step 1[d] – acting on the program according
`to the verification. ................................................ 40
`
`
`
`ii
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`Apple Inc. Exhibit 1008 Page 3
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`

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`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`’941 Patent, Claim 2 – A method according to claim 1,
`further comprising the steps of: establishing a license
`authentication bureau. ............................................................... 40
`
`’941 Patent, Claim 3 – A method according to claim 2,
`wherein setting up a verification structure further
`comprising the steps of: establishing, between the
`computer and the bureau, a two-way data-
`communications linkage; transferring, from the computer
`to the bureau, a request-for-license including an
`identification of the computer and the license-record's
`contents from the selected program; forming an
`encrypted license-record at the bureau by encrypting
`parts of the request-for-license using part of the
`identification as an encryption key; transferring, from the
`bureau to the computer, the encrypted license-record; and
`storing the encrypted license record in the erasable non-
`volatile memory area of the BIOS. ........................................... 41
`
`’941 Patent, Claim 5 - A method according to claim 3
`wherein the identification of the computer includes the
`unique key. ................................................................................ 42
`
`’941 Patent, Claim 6 – A method according to claim 1
`wherein selecting a program includes the steps of:
`establishing a licensed-software-program in the volatile
`memory of the computer wherein said licensed-software-
`program includes contents used to form the license-
`record......................................................................................... 42
`
`’941 Patent, Claim 7 – A method according to claim 6
`wherein using an agent to set up the verification structure
`includes the steps of: 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. ....................................................................... 43
`
`
`
`iii
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`Apple Inc. Exhibit 1008 Page 4
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`

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`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`’941 Patent, Claim 8– A method according to claim 6
`wherein establishing a license-record includes the steps
`of: forming a license-record by encrypting of the contents
`used to form a license-record with other predetermined
`data contents, using the key; and establishing the
`encrypted license-record in one of the at least one
`established license-record locations. ......................................... 44
`
`’941 Patent, Claim 9– A method according to claim 7
`wherein verifying the program includes the steps of:
`encrypting the licensed-software-program's license-
`record contents from the volatile memory area or
`decrypting the license-record in the erasable, non-volatile
`memory area of the BIOS, using the pseudo-unique key;
`and comparing the encrypted licenses-software-program's
`license-record contents with the encrypted license-record
`in the erasable, non-volatile memory area of the BIOS, or
`comparing the license-software-program's license-record
`contents with the decrypted license-record in erasable
`non-volatile memory area of the BIOS. .................................... 45
`
`’941 Patent, Claim 10– A method according to claim 9
`wherein acting on the program includes the step:
`restricting the program's operation with predetermined
`limitations if the comparing yields non-unity or
`insufficiency. ............................................................................. 45
`
`’941 Patent, Claim 11– A method according to claim 1
`wherein the volatile memory is a RAM. ................................... 46
`
`’941 Patent, Claim 12– The method of claim 1, wherein a
`pseudo-unique key is stored in the non-volatile memory
`of the BIOS. .............................................................................. 46
`
`’941 Patent, Claim 13 – The method of claim 1, wherein
`a unique key is stored in a first non-volatile memory area
`of the computer. ........................................................................ 46
`
`’941 Patent, Claim 14 – The method according claim 13,
`wherein the step of using the agent to set up the
`verification record, including the license record, includes
`
`
`
`iv
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`Apple Inc. Exhibit 1008 Page 5
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`

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`encrypting a license record data in the program using at
`least the unique key. .................................................................. 47
`
`14.
`
`15.
`
`’941 Patent, Claim 16 – The method according to claim
`13, wherein the step of verifying the program includes a
`decrypting the license record data accommodated in the
`erasable second non-volatile memory area of the BIOS
`using at least the unique key. .................................................... 47
`
`’941 Patent, Claim 17 – The method according to claim
`13, wherein the step of verifying the program includes
`encrypting the license record that is accommodated in the
`program using at least the unique key. ..................................... 48
`
`B.
`
`C.
`
`Hasebe in view of the DMI Specification and Chang Renders
`Obvious Claims 1-3, 5-14, and 16-17 ................................................. 48
`
`Hasebe in view of the DMI Specification and Arbaugh Renders
`Obvious Claims 1-3, 5-14, and 16-17 ................................................. 49
`
`D. Hasebe in view of the DMI Specification and Isikoff Renders
`Obvious Claims 1-3, 5-14, and 16-17 ................................................. 50
`
`E.
`
`Hasebe in view of the DMI Specification, Shipman, and Angelo
`Renders Obvious Claims 1-3, 5-14, and 16-17 ................................... 50
`
`XIII. Conclusion ..................................................................................................... 51
`
`
`
`v
`
`Apple Inc. Exhibit 1008 Page 6
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`

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`
`
`I.
`
`I, Jon B. Weissman, declare as follows:
`
`Introduction
`
`1.
`
`I have been retained by Apple, Inc. (“Apple” or “Petitioner”) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. Although I am being compensated at my usual rate for the
`
`time I spend on this matter, no part of my compensation depends on the outcome
`
`of this proceeding, and I have no other interest in this proceeding.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 6,411,941
`
`(“the ’941 patent”) (attached as Ex. 1001 to Apple’s petition). The application for
`
`the ’941 patent was filed on October 1, 1998, as U.S. Patent Application No.
`
`09/164,777, and the patent issued on June 25, 2002.
`
`3.
`
`I have been asked to consider three things. First, whether the claims of
`
`the ’941 patent distinctly identify the claimed invention. Second, whether the
`
`specification makes it clear that the inventors were in possession of the invention
`
`as set forth in the claims. Third, whether certain references in combination disclose
`
`or suggest the features recited in the claims of the ’941 patent. My opinions are set
`
`forth below.
`
`II. Qualifications
`
`4. My academic and professional background is in computer science,
`
`specifically in the areas of distributed systems, file systems, and cloud computing.
`
`
`
`1
`
`Apple Inc. Exhibit 1008 Page 7
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`

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`I am a leading researcher and educator in these areas. My career includes over 20
`
`years’ experience in industry and academia. As a systems researcher, I have built
`
`practical systems that have application in a wide variety of settings across many
`
`different types of distributed and parallel systems. For example, I was a lead
`
`designer on one of the first distributed Grid computing systems that spanned the
`
`Internet, called Legion. In my current work, I analyze and develop systems that
`
`allow mobile devices to utilize remote cloud-computing resources to improve
`
`performance and save energy. My curriculum vitae, which includes a more
`
`detailed summary of my background, experience, and publications, is attached as
`
`Appendix A. Below I provide a short summary of my education and experience,
`
`which I believe to be most pertinent to the opinions that I express.
`
`5.
`
`I received a Bachelor of Science degree in Applied Mathematics and
`
`Computer Science from Carnegie Mellon University in 1984. I received a Master
`
`of Science degree in Computer Science in 1989 and a Ph.D. degree in Computer
`
`Science in 1995, both from the University of Virginia. My Ph.D. thesis involved
`
`developing the first automated scheduling system for parallel and distributed
`
`applications across heterogeneous local and wide-area networks. After completion
`
`of my Ph.D. program, I worked in industry for five years in the area of distributed
`
`systems.
`
`
`
`2
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`Apple Inc. Exhibit 1008 Page 8
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`

`
`6.
`
`In 1995, I joined the faculty of the University of Texas in San Antonio
`
`as Assistant Professor of Computer Science. In 1999, I joined the faculty of the
`
`University of Minnesota as Assistant Professor of Computer Science, where I am
`
`currently Full Professor of Computer Science – the highest academic rank at a top-
`
`tier research University. At the University of Minnesota, I lead the Distributed
`
`Computing Systems Group, consisting of faculty colleagues and both graduate and
`
`undergraduate students. I also serve as an investigator for the Center for Research
`
`in Intelligent Storage (CRIS), sponsored by the National Science Foundation.
`
`7.
`
`I have published over 90 technical articles, most at highly competitive
`
`refereed conferences and rigorously reviewed journals. I have recently served on
`
`the technical editorial boards of several flagship journals, including IEEE
`
`Transactions on Parallel and Distributed Systems and IEEE Transactions on
`
`Computers. I am currently the steering committee chair for the ACM International
`
`Symposium on High Performance Parallel and Distributed Systems, the flagship
`
`conference in my area.
`
`8. My research in computer systems has been funded by the National
`
`Institutes of Health, NASA, the National Science Foundation, the Department of
`
`Energy, and the Air Force. With regard to the subject matter of the ’941 patent
`
`relating to computer systems and security, my collaborators and I have obtained
`
`over $2 million in grant funding, including:
`
`
`
`3
`
`Apple Inc. Exhibit 1008 Page 9
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`

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`• National Institute of Health, ePCRN: Electronic Primary Care
`
`Research Network. This project explores how to support secure query
`
`processing across distributed networks.
`
`• National Science Foundation, “A Data Mining and Exploration
`
`Middleware for Grid and Distributed Computing.” This project
`
`explores how to perform intrusion detection in distributed systems.
`
`• National Science Foundation, “One Cloud Does Not Fit All:
`
`Minnesota Integrated Cloud Systems Research Testbed (MIST).” This
`
`project seeks to build a cloud testbed consisting of mobile devices and
`
`servers distributed around campus with security as one of the principle
`
`research foci.
`
`• Air Force Office of Scientific Research, “Telecommunication
`
`Networks
`
`for Mobile
`
`and Distributed Computing
`
`and
`
`Communications.” This project focuses on developing software
`
`technology to securely connect mobile devices to servers and
`
`developing the technology for applications to run across distributed
`
`networks, such as the Grid.
`
`9. With regard to the subject matter of the ’941 patent relating to secure
`
`computing systems, I have published several papers, here is a small subset:
`
`
`
`4
`
`Apple Inc. Exhibit 1008 Page 10
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`

`
`• “Nebula: Distributed Edge Cloud for Data Intensive Computing,”
`
`Mathew Ryden, Kwangsung Oh, Abhishek Chandra and Jon B.
`
`Weissman, IEEE International Conference on Cloud Engineering,
`
`March 2014, Boston, MA.
`
`• “A Dynamic Approach for Characterizing Collusion in Desktop Grids,”
`
`Louis-Claude Canon, Emmanuel Jeannot, and Jon B. Weissman, 24th
`
`IEEE International Parallel and Distributed Processing Symposium
`
`(IPDPS), 2010.
`
`• “Adaptive Reputation-Based Scheduling on Unreliable Distributed
`
`Infrastructures,” Jason D. Sonnek, Abhishek Chandra, and Jon B.
`
`Weissman, IEEE Transactions on Parallel and Distributed Systems,
`
`18(11), November 2007.
`
`III. Materials Reviewed
`
`10.
`
`In forming my opinions, I have reviewed the ’941 Patent, the
`
`prosecution history of the ’941 patent, and the exhibits to the covered business
`
`method patent petition that this declaration supports.
`
`IV.
`
`Summary of Findings
`
`11.
`
`It is my opinion that the following references render obvious claims 1-
`
`3, 5-14, and 16-17 of the ’914 patent:
`
`
`
`5
`
`Apple Inc. Exhibit 1008 Page 11
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`

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`• European Patent Application Publication No. EP 0 766 165 A2
`
`(“Hasebe”) (“Hasebe,” Exh. 1012)
`
`• Desktop Management BIOS Specification Version 2.0, March 6, 1996
`
`(“DMI Spec.,” Exh. 1013)
`
`• U.S. Patent No. 5,724,425 (“Chang,” Exh. 1014).
`
`• Arbaugh, W.A et al., “A secure and reliable bootstrap architecture,”
`
`Security and Privacy, 1997 IEEE Symposium on , pp.65-71, 4-7 May
`
`1997 (“Arbaugh,” Exh. 1015).
`
`• U.S. Patent No. 5,748,804 (“Isikoff,” Exh. 1016).
`
`• PCT Publication No. WO 97/36241 (“Shipman,” Exh. 1017).
`
`• European Patent Application Publication No. EP 0 824 233 A2
`
`(“Angelo,” Exh. 1018).
`
`12.
`
`It is my opinion, that the ’941 patent is invalid for lack of written
`
`description support for the term “agent” that appears in all of the claims of the ’941
`
`patent.
`
`13. Furthermore, it is my opinion that the term “agent” in the ’941
`
`patent’s claims is a mean-plus-function element and the ’941 patent specification
`
`fails to link any structure to the recited function for the “agent,” which renders the
`
`claims invalid as indefinite.
`
`
`
`6
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`Apple Inc. Exhibit 1008 Page 12
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`

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`V.
`
`Legal Standards
`
`A.
`
`14.
`
`Claim Construction
`
`I have been informed that when construing claim terms in an
`
`unexpired patent, a claim subject to covered business method patent review
`
`receives the broadest reasonable construction in light of the specification of the
`
`patent in which it appears. I further understand that the broadest reasonable
`
`construction is the broadest reasonable interpretation (BRI) of the claim language,
`
`and that any term that lacks a definition in the specification is also given a broad
`
`interpretation. I have also been advised that, at the same time, claim terms are
`
`given their ordinary and accustomed meaning as would be understood by one of
`
`ordinary skill in the art. I have been informed that the construction of a patent term
`
`applied during this proceeding may differ from that in a district court proceeding.
`
`15.
`
`I have been informed that patentees may claim their inventions using
`
`purely functional language, which is known as “means-plus-function” claiming. I
`
`have been informed that courts determine whether a claim is a means-plus-function
`
`claim by examining whether the claim itself recites sufficiently definite structure to
`
`perform the recited function. I have been informed that if the claim recites
`
`sufficient structure to perform the recited function, it is not a means-plus-function
`
`claim and vice versa. I also have been informed that a claim limitation using the
`
`word “means” presumptively does not recite sufficient structure, while a claim
`
`
`
`7
`
`Apple Inc. Exhibit 1008 Page 13
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`

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`limitation that omits “means” presumptively recites sufficient structure. These
`
`presumptions can be overcome by a showing that the claim either does, or does not,
`
`recite sufficient structure.
`
`16.
`
`I have been informed that a means-plus-function limitation includes
`
`two components: (1) the recited function; and (2) the corresponding structure in
`
`the written description of the patent for performing the function. I also have been
`
`informed that structure corresponds to the claimed function only if the
`
`specification or the prosecution history clearly links or associates that structure to
`
`the recited function.
`
`17.
`
`I have been informed that, if a means-plus-function element recites a
`
`computer-implemented limitation, the structure disclosed in the specification must
`
`be more than simply a general purpose computer or microprocessor. Instead, the
`
`specification must disclose an algorithm for performing the recited function. I also
`
`have been informed that, although the algorithm may be disclosed in any
`
`understandable terms, it must be capable of performing each and every function to
`
`the full extent recited. I have been informed that this is true even if implementing
`
`the recited function would be well understood by persons of ordinary skill in the
`
`art. In other words, even if a person skilled in the art would readily know how to
`
`implement the recited function, the specification still must explain how the recited
`
`function is actually performed. I have been informed that an abstraction that
`
`
`
`8
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`Apple Inc. Exhibit 1008 Page 14
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`

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`merely describes the function of the claimed means is not a sufficient disclosure of
`
`corresponding structure.
`
`B. Obviousness
`
`18.
`
`I understand that a patent claim may also be invalid if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art at the
`
`time of the claim’s effective filing date. I understand that an invention may be
`
`obvious if a person of ordinary skill in the art with knowledge of the prior art
`
`would have conceived the claimed invention, even if all of the limitations of the
`
`claim cannot be found in a single prior art reference.
`
`19.
`
`I understand that, in assessing whether a claimed invention would
`
`have been obvious, the following factors are considered.
`
`20. First, I understand that the level of ordinary skill that a person
`
`working in the field of the claimed invention would have had at its effective filing
`
`date must be considered.
`
`21. Second, I understand that the scope and content of the prior art must
`
`be considered. I understand that, to be considered as prior art, a reference must be
`
`reasonably related to the claimed invention, which means that the reference is in
`
`the same field as the claimed invention or is from another field to which a person
`
`of ordinary skill in the art would refer to solve a known problem.
`
`
`
`9
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`Apple Inc. Exhibit 1008 Page 15
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`22. Third, I understand that the differences, if any, that existed between
`
`the prior art and the claimed invention must be considered. I understand that the
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`determination of such differences should focus on the claimed invention as a whole.
`
`23. Fourth, I understand that other factors, known as “secondary
`
`considerations” of non-obviousness, should be considered. I understand these
`
`factors to include: (i) commercial success of a product due to the merits of the
`
`claimed invention; (ii) a long-felt need for the solution provided by the claimed
`
`invention; (iii) unsuccessful attempts by others to find the solution provided by the
`
`claimed invention; (iv) copying of the claimed invention by others; (v) unexpected
`
`and superior results from the claimed invention; (vi) praise of the claimed
`
`invention by others in the art; (vii) independent invention of the claimed invention
`
`by others before or at about the same time as it was conceived by the named
`
`inventors; (viii) whether others expressed surprise or disbelief regarding the
`
`invention; (ix) whether others sought or obtained rights to the claimed invention
`
`from the patentee; and (x) whether the inventor proceeded contrary to accepted
`
`wisdom in the art.
`
`24.
`
`I understand that it is not sufficient to prove a patent claim obvious to
`
`show that each of its limitations was independently known in the prior art and that
`
`there also must have been a reason for a person of ordinary skill in the art to have
`
`combined or modified the elements or concepts from the prior art in the same way
`
`
`
`10
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`Apple Inc. Exhibit 1008 Page 16
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`

`
`as in the claimed invention. In assessing whether such a reason existed, I
`
`understand that the following may be considered: (i) whether the combination or
`
`modification was merely the predictable result of using prior art elements
`
`according to their known functions; (ii) whether the claimed invention provides an
`
`obvious solution to a known problem in the art; (iii) whether the claimed invention
`
`applied a known technique that had been used to improve a similar device or
`
`method in a similar way; (iv) whether the prior art teaches or suggests making the
`
`combination or modification claimed in the patent; (v) whether the prior art teaches
`
`away from combining elements in the claimed invention; (vi) whether it would
`
`have been obvious to try the combination or modification, such as when there is a
`
`design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions; and (vii) whether the combination or modification
`
`resulted more from design incentives or other market forces.
`
`25.
`
`I understand that, when considering whether a claimed invention was
`
`obvious, one should be careful not to use the benefit of hindsight and that, instead,
`
`one should put oneself in the position of a person of ordinary skill in the art as of
`
`the effective filing date of the claimed invention and should not consider what is
`
`known today or what is learned from the teaching of the patent.
`
`
`
`11
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`Apple Inc. Exhibit 1008 Page 17
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`

`
`C. Written Description
`
`26.
`
`I have been informed that 35 U.S.C. § 112 requires the patent to
`
`contain an adequate written description of the claimed invention. I understand that
`
`the purpose of the written description requirement is to demonstrate that the
`
`inventor was in possession of the invention at the time the patent application was
`
`filed, even though subsequently the claims may have been changed or new claims
`
`may have been added. I understand that this requirement is met if, at the time of
`
`filing of the application for a patent, a person of ordinary skill in the art reading
`
`that application would have recognized that it described the invention as claimed.
`
`I understand that the application does not need to specifically disclose a claim
`
`limitation so long as a person of ordinary skill in the art would understand that the
`
`missing requirement is necessarily implied in the application as originally filed. I
`
`understand that the written description inquiry must take into account the entirety
`
`of what is disclosed within the specification. I understand that it is insufficient that
`
`undisclosed subject matter would have been obvious to a person of ordinary skill in
`
`the art. I understand that if a claim is proved to lack an adequate written
`
`description by clear and convincing evidence, the claim is invalid.
`
`D.
`
`27.
`
`Indefiniteness
`
`I have been informed that a patent is invalid for indefiniteness if its
`
`claims, read in light of the specification delineating the patent, and the prosecution
`
`
`
`12
`
`Apple Inc. Exhibit 1008 Page 18
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`

`
`history, fail to inform, with reasonable certainty, those skilled in the art about the
`
`scope of the invention. In determining whether a claim is indefinite, I have been
`
`informed that I should consider both the “intrinsic evidence” (i.e., the claims, the
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`specification, and the prosecution history) and the “extrinsic evidence” (e.g.,
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`relevant publications contemporaneous with the filing date of the ’941 patent).
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`28.
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`I also have been informed that, if the specification fails to clearly link
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`the recited function of a means-plus-function limitation to structure for performing
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`that function, the claim containing that limitation is indefinite.
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`VI. The ’941 Patent
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`A. Overview of the ’941 Patent
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`29. The ’941 patent is directed to a method of restricting software
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`operation within a license limitation that is applicable for a computer having a first
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`non-volatile memory area, a second non-volatile memory area, and a volatile
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`memory area. (’941 patent at Abstract.) The method includes the steps of selecting
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`a program residing in the volatile memory, setting up a verification structure in the
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`non-volatile memories, verifying the program using the structure, and acting on the
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`program according to the verification. (’941 patent at Abstract.) For example,
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`Figure 2 (one of only two figures in the ’941 patent) depicts these four basic steps.
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`13
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`Apple Inc. Exhibit 1008 Page 19
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`
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`30. The ’941 patent describes these four basic steps at 6:4-52. The
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`“selecting” step is broadly described in the specification to include “establishing a
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`licensed-software-program” in RAM or some other volatile memory. (’941 patent
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`at 6:7-16.) I note that this description of “selecting” is broader than what is
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`actually claimed in claim 1 of the ’941 patent, which further requires that the
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`selected program “resides in the volatile memory.” Claim 18, on the other hand, is
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`14
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`Apple Inc. Exhibit 1008 Page 20
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`closer to the broader “selecting” step in the specification. Specifically, claim 18
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`require “loading the application software program.”
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`31. The “setting up” step is described as applying to the verification
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`structure, similar to how this step appears in claim 1. (’941 patent at 6:17-21.)
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`The example in the specification provides that setting up the verification structure
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`includes “establishing or certifying” a key and “establishing at least one license-
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`record location.”
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`32. The “verifying” step is a basic comparison step using the license
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`record to verify that the program is licensed. In on example, the verifying includes
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`encrypting a license-record and comparing the encrypted license-record to another
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`encrypted license-record. (’941 patent at 6:29-39.) Alternatively, in another
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`example, the step may include decrypting a license-record and comparing that to
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`another decrypted license-record. (’941 patent at 6:29-39.)
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`33. The “acting” step is done by restricting the program operation in
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`accordance with the verification. (’941 patent at 6:40-42.) The ’941 patent also
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`describes other steps that may be part of the “acting,” including erasing the
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`software, providing warnings, and placing charges on a user’s account. (’941
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`patent at 6:46-52.)
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`15
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`Apple Inc. Exhibit 1008 Page 21
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`34. The ’941 patent describes implementing the steps of Figure 2 in a
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`conventional computer. (’941 patent at 1:44-52.) For example, Figure 1 depicts a
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`schematic diagram of an envisioned computer system and license bureau:
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`
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`35. The only aspect of the claimed method that the ’941 patent purports to
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`be inventive is storing the license-record in non-volatile memory of the BIOS. For
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`example, the ’941 patent states that prior art licensing systems existed. (’941
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`patent 1:19-32.) Additionally, the ’941 patent concedes that storing a key in the
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`BIOS was also “conventional” technology. (’941 patent at 1:45-47.) The ’941
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`patent only describes one “advantage” of the described licensing method:
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`An important advantage in utilizing non-volatile memory
`such as that residing in the BIOS is that the required level
`of system programming expertise that is necessary to
`intercept or modify commands, interacting with the BIOS,
`is substantially higher than those needed for tampering
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`
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`16
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`Apple Inc. Exhibit 1008 Page 22
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`with data residing in volatile memory such as hard disk.
`Furthermore, there is a much higher cost to the
`programmer, if his tampering is unsuccessful, i.e. if data
`residing in the BIOS (which is necessary for the
`computer's operability) is inadvertently changed by the
`hacker. This is too high of a risk for the ordinary
`software hacker to pay. Note that various recognized
`means for hindering the professional-like hacker may
`also be utilized (e.g. anti-debuggers, etc.) in conjunction
`with the present invention.
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`(’941 patent at 3:4-17.) The ’941 patent does not allege that any other part of the
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`described licensing system is new. In other words, the ’94