Case4:11-cv-06357-YGR Document107 Filed12/31/12 Page1 of 21
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`Case No.: 11-CV-06357 YGR
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`CLAIM CONSTRUCTION ORDER
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`ANCORA TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`AND RELATED COUNTER-CLAIM
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`Ancora Technologies, Inc. (“Ancora”) alleges that devices that run Apple Inc.’s (“Apple”)
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`iOS operating system infringe on U.S. Patent No. 6,411,941 (the “ ’941 Patent”). Apple has
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`counterclaimed for declaratory judgments of non-infringement and invalidity.
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`The parties have requested the Court construe seven claim terms/phrases from the ’941
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`Patent: (1) “volatile memory”; (2) “non-volatile memory”; (3) “BIOS”; (4) “program”; (5) “license
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`record”; (6) “verifying the program using at least the verification structure”; and (7) whether the
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`steps in the asserted claims must be performed in a specific order. On June 29, 2012, the parties
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`provided a technology tutorial and on July 11, 2012, the Court held a claim construction hearing.
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`Based upon the papers submitted, the argument of counsel, for the reasons set forth below,
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`Northern District of California
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`the Court provides the following claim construction.
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`I.
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`BACKGROUND
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`The patent in suit relates to software anti-piracy technology. At issue here is technology
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`directed at preventing computer users from copying software and then running that software without
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`a license. Ancora is the owner of the ’941 Patent, which claims a method of restricting software
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`Apple Inc. Exhibit 1009 Page 1
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`operation within a license limitation, i.e. it teaches a system for ensuring that only the authorized
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`user of software can operate the software at issue. Apple’s iOS operating system also restricts
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`software operation within a license limitation. Ancora alleges that the Apple products that run the
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`iOS operating system infringe on the ’941 Patent.
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`The ’941 Patent uses the memory of a computer’s “BIOS” to store a “license record” to
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`confirm whether a “program” is licensed to run on that computer. Every computer has a unique
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`identifier embedded at the time of manufacture. Under the teachings of the ’941 Patent, when a
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`licensed program first launches it generates a license record using the computer’s unique identifier,
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`which license record is stored in the BIOS area of a computer. This license record is unique to that
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`particular computer. When a licensed program is loaded, it can verify whether the software is
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`licensed to run on that computer by referencing the license record stored in the BIOS with the license
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`record from the program. If they match, the program continues to run. If the program has been
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`copied, the license information does not match and the program will not run.
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`A.
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`BACKGROUND OF THE PATENT
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`Plaintiffs provide the following background: In 1997, when Miki Mullor and Julian Valiko,
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`the co-inventors of the ’941 Patent (“Patentees”), began developing the technology that would
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`become the ’941 Patent, there were two approaches to combating software piracy, a hardware
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`approach and a software approach. The hardware approach was costly, inconvenient and not suitable
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`for software downloaded from the internet required as it required users of software to use a piece of
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`hardware called a “dongel” in order to access the software. The software based products were too
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`Northern District of California
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`easily hacked by skilled programmers.
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`Patentees developed a third approach that had the advantages of both the hardware approach
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`and software approach without the disadvantages of either. Patentees identified available memory
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`space in hardware stored on the computer’s motherboard, the BIOS, which they repurposed to store
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`software licensing technology. The inventive aspect of the ’941 Patent is that the writable, non-
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`volatile memory of the BIOS is not ordinarily considered to be a storage medium for software
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`licensing technology. The advantage of using the BIOS for this purpose is that the level of
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`programming expertise required to tamper with data stored in the BIOS is substantially greater than
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`Apple Inc. Exhibit 1009 Page 2
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`the expertise needed to tamper with data residing in volatile memory, and unsuccessful tampering
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`comes with higher risk as it could render the computer inoperable.
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`Patentees applied for an Israeli patent in 1998. On October 1, 1998, Patentees applied for the
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`’941 Patent, with a priority date of May 21, 1998 based upon the Israeli patent. The ’941 Patent
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`issued in 2002.
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`B.
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`CLAIM TERMS/PHRASES TO BE CONSTRUCTED
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`Sixteen claims from the ’941 Patent are asserted: independent Claim 1, and dependent
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`Claims 2, 3, and 5-17, which refer to it.
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`Claim 1, which is the only independent claim asserted, recites the following (the language the
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`parties have identified for construction is in bold and italics):
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`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:
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`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,
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`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.
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`(’941 Patent, claim 1).
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`The parties request the Court construe seven claim terms/phrases: (1) “volatile memory”; (2)
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`“non-volatile memory”; (3) “BIOS”; (4) “program”; (5) “license record”; (6) “verifying the program
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`using at least the verification structure”; and (7) All Asserted Claims.1
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`II.
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`PRINCIPLES OF CLAIM CONSTRUCTION
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`Claim construction is a matter of law, to be decided by the Court. Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 387 (1996) (determination of infringement is a two-step analysis:
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`First, the Court determines the scope and meaning of the claims; second, the properly construed
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`claims are compared to the accused device.). “[T]he role of a district court in construing claims is …
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`to give meaning to the limitations actually contained in the claims, informed by the written
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`1 In addition, the parties have identified one term on which they have agreed on a construction (“verification
`structure accommodating data that includes at least one license record”).
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`Apple Inc. Exhibit 1009 Page 3
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`description, the prosecution history if in evidence, and any relevant extrinsic evidence.” American
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`Piledriving Equipment, Inc. v. Geoquip, Inc., 637 F.3d 1324, 1331 (Fed. Cir. 2011). “Claim
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`construction is a matter of resolution of disputed meanings and technical scope, to clarify and when
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`necessary to explain what the patentee covered by the claims, for use in the determination of
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`infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Thus,
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`claim terms need only be construed “to the extent necessary to resolve the controversy.” Wellman,
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`Inc. v. Eastman Chemical Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (citing Vivid Technologies, Inc.
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`v. American Science & Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).2
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`The starting point in a claims construction analysis is the language of the claims themselves.
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`These define the invention that the patentee may exclude others from practicing. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). The general rule is to construe a claim term in a
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`manner consistent with its “ordinary and customary meaning,” which is “the meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at
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`1312.
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`Claims must be read in view of the specification, of which they are a part and in a manner
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`consistent with the patent’s specification. See Markman v. Westview Instruments, Inc., 52 F.3d 967,
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`979 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). The specification may act as a sort of dictionary,
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`which explains the invention and may define terms used in the claims. Id. The Court also should
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`consider the patent’s prosecution history, if it is in evidence. Id. at 980. The prosecution history
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`may “inform the meaning of the claim language by demonstrating how the inventor understood the
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`invention and whether the inventor limited the invention in the course of prosecution, making the
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`claim scope narrower than it would otherwise be.” Phillips, supra, 415 F.3d at 1317 (citing
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`Vitronics, 90 F.3d at 1582-83); see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir.
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`2 Once the meaning of a term used in a claim has been determined, the same meaning applies to that term for
`all claims in which the same term appears. Inverness Med. Switzerland GmbH v. Princeton Biomeditech
`Corp., 309 F.3d 1365, 1371 (Fed. Cir. 2002). After a term is construed, the Court’s construction becomes the
`legally operative meaning of the disputed terms that governs further proceedings in the case. See Chimie v.
`PPG Indus., Inc., 402 F.3d 1371, 1377 (Fed. Cir. 2005). However, “district courts may engage in a rolling
`claim construction, in which the court revisits and alters its interpretation of the claim terms as its
`understanding of the technology evolves.” Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd., 599
`F.3d 1308, 1316 (Fed. Cir. 2010).
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`Apple Inc. Exhibit 1009 Page 4
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`2005) (“The purpose of consulting the prosecution history in construing a claim is to exclude any
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`interpretation that was disclaimed during prosecution.”) (internal quotations omitted). The Court
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`may, in its discretion, consider extrinsic evidence3 if such sources will aid the Court in determining
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`“the true meaning of language used in the patent claims.” Phillips, supra, 415 F.3d at 1318.
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`Further, and as relevant here, whether a patent claim complies with the definiteness
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`requirement of 35 U.S.C. § 112, ¶ 2 is also a matter of claim construction. See Wellman, Inc. v.
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`Eastman Chemical Co., 642 F.3d 1355, 1365-66 (Fed. Cir. 2011), cert. denied, 132 S.Ct. 1541
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`(2012). Section 112, paragraph 2 of the Patent Act provides in pertinent part: “[t]he specification
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`shall conclude with one or more claims particularly pointing out and distinctly claiming the subject
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`matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. This section contains
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`two requirements: “first, [the claim] must set forth what ‘the applicant regards as his invention,’ and
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`second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently
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`‘definite.’” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed. Cir. 2002); see
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`also, Phillips, supra, 415 F.3d at 1316. In determining whether a claim is sufficiently definite, the
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`Court must consider whether “one skilled in the art would understand the bounds of the claim when
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`read in light of the specification.” Allen Eng’g Corp., supra, 299 F.3d at 1348 (citing Personalized
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`Media Comm’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998). “Only claims
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`‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.” Halliburton Energy
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`Services, Inc. v. M-I LLC, 514 F.3d 1244, 1250 (Fed. Cir. 2008) (quoting Datamize, LLC v. Plumtree
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`Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
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`III. DISCUSSION
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`A.
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`THE FIRST AND SECOND DISPUTED CLAIM TERMS – “VOLATILE MEMORY” & “NON-
`VOLATILE MEMORY” (CLAIMS 1-3, 5-17)
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`The parties’ dispute focuses on the impact of whether examples provided in the specification
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`render the claim indefinite.
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`3 Although the use of extrinsic evidence is discretionary, the court may always consult technical treatises and
`dictionaries to understand the technology and to construe the claims, so long as no definition in the intrinsic
`evidence is contradicted.
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`Apple Inc. Exhibit 1009 Page 5
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`Case4:11-cv-06357-YGR Document107 Filed12/31/12 Page6 of 21
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`The parties’ proposed constructions are shown below:
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`TERM
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`APPLE’S PROPOSED
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`ANCORA’S PROPOSED
`CONSTRUCTION
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`“volatile memory”
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`This term is indefinite under
`35 U.S.C. § 112, ¶ 2.
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`memory that is not maintained
`when the power is removed
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`“non-volatile
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`This term is indefinite under
`35 U.S.C. § 112, ¶ 2.
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`memory that is maintained when
`the power is removed
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`Claim 1 calls out two different types of memory―volatile and non-volatile. The plain and
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`ordinary meaning of the terms is not in dispute. To one of ordinary skill in the art, a volatile memory
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`is memory whose data is not maintained when the power is removed and a non-volatile memory is
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`memory whose data is maintained when the power is removed.
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`However, the '941 Patent specifically indicates that “volatile memory” can take the form of a
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`hard disk. Apple takes issue with this pronouncement. A “hard disk” is generally known by those
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`of ordinary skill in the art to be non-volatile memory because the memory is maintained when the
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`power is removed. Apple argues that the Patentees’ express identification of a hard disk as “volatile
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`memory” runs counter to the understanding of one of ordinary skill in the art, and therefore, renders
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`the terms indefinite under 35 U.S.C. § 112, ¶ 2. Next, it argues that a definition of “volatile
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`memory” as “memory that is not maintained when the power is removed” excludes the very same
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`hard disk that the specification identifies as volatile. Furthermore, Apple argues that this ambiguity
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`affects the meaning of “non-volatile memory” by implication, which makes it impossible to
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`determine the scope of both terms as those terms are used in the ’941 Patent. According to Apple,
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`this creates an insoluble ambiguity as to what characteristics render memory volatile or non-volatile.
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`Thus, Apple argues that although the specification identifies only “hard disk” as a form of volatile
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`memory, this insoluble ambiguity applies to other types of memories as well because there is no
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`explanation of what characteristics render memory volatile or non-volatile. According to Apple,
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`“[i]t is difficult to imagine a more compelling example of a situation in which ‘[c]ompetitors trying
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`to practice the invention or to design around it would be unable to discern the bounds of the
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`invention.’” (Opp’n 9 (quoting Honeywell Int’l, Inc. v ITC, 341 F.3d 1332, 1341 (Fed. Cir. 2008).)
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`Apple Inc. Exhibit 1009 Page 6
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`Ancora argues that the claim terms should not be constructed at all because the plain and
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`ordinary meaning of the terms is not in dispute and the structure disclosed in the specification is
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`irrelevant to the claim construction analysis.4 Ancora urges the Court to perform a claim
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`construction divorced from the context of the specification and prosecution history. Old Town
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`Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1318 (Fed. Cir. 2006).
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`Claims are not indefinite merely because they present a difficult task of claim construction.
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`See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004) (“unless the court
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`concludes, after applying all the available tools of claim construction, that the claim is still
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`ambiguous, the axiom regarding the construction to preserve the validity of the claim does not
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`apply.”). Instead, “[i]f the meaning of the claim is discernible, even though the task may be
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`formidable and the conclusion may be one over which reasonable persons will disagree, we have
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`held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Halliburton Energy
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`Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008) (citing Exxon Research & Eng’g
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`Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) (citations omitted).
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`Ancora explains that volatile memory is routinely stored on the “hard disk” when two
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`programs attempt to write data to the same location in RAM (random access memory), which it
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`refers to as “virtual data.” Thus, Ancora argues that it is entirely appropriate to consider a “hard
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`disk” as a form of volatile memory to someone of ordinary skill in the art. Apple disagrees. Apple’s
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`view may be appealing to a layman; the same may not be true for someone of ordinary skill in the
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`art.
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`Based on the foregoing analysis, the Court declines to find the term indefinite as a matter of
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`law and finds that the claim terms should be given their ordinary meaning, specifically:
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`Volatile memory is memory whose data is not maintained when the power is removed; and
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`non-volatile memory is memory whose data is maintained when the power is removed.
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`4 Ancora also argues that construction of this term is unnecessary for the infringement analysis because the
`term hard disk does not appear in Claim 1 and Apple’s accused devices do not store the license record in a
`hard-drive. However, Apple has raised a counterclaim of invalidity, and indefiniteness is a basis to find a
`patent invalid.
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`Apple Inc. Exhibit 1009 Page 7
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`B.
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`THIRD DISPUTED CLAIM TERM/ PHRASE – “BIOS” (CLAIMS 1-3, 5-17)
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`No party disputes that “BIOS” is an acronym for Basic Input/Output System. Rather, the
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`parties dispute whether the term “BIOS” applies to all computers or only to IBM PC-compatible
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`computers, as Apple proposes.5 The parties’ proposed constructions are shown below:
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`APPLE’S PROPOSED
`CONSTRUCTION
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`ANCORA’S PROPOSED
`CONSTRUCTION
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`software routines on IBM PC
`compatible computers that handle
`startup operations and support the
`transfer of data among peripheral
`devices
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`software routines that handle
`startup operations
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`The claims of the ’941 Patent refers to the “non-volatile memory area of the BIOS” of a
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`computer fourteen times (and refers to the “non-volatile memory area of a BIOS” once). Neither the
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`claim nor the specification defines “BIOS.” In the prosecution history the Patent Examiner gave the
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`following definition of BIOS based upon “The Microsoft Computer Dictionary, 5th Edition, 2002”:
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`the set of essential software routines that test hardware at startup, start the operating
`system, and support the transfer of data among hardware devices.
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`The Patent Examiner further commented:
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`This definition is consistent with the specification of the ’941 patent. Since a BIOS is
`therefore defined by the functional descriptive material contained within it, one skilled
`in the art would consider any non-functional descriptive material, such as tables, to be
`part of the BIOS only if it is made and used by the functions of the BIOS itself. This
`does not preclude such material being also used or modified by programs located
`outside of the BIOS, such as applications running in an operative system. The fact that
`a program or tables resides in non-volatile memory does not necessarily mean that it is
`part of the BIOS. It is therefore the case that a reasonable examiner would only
`consider a table to be in a BIOS if it were, at a minimum, created by a function
`residing in the BIOS.
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`(Rondini Dec. ¶ 4, Ex. 3, Order Granting Request for Reexamination, at 8-9, ANCA 2568-69.)
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`5 Apple also seeks to limit the scope of the definition so that BIOS handles transfer of data among “peripheral”
`devices. Ancora argues that the Claim does not mention “peripheral” devices and that the Examiner used the
`broader “hardware” language not the narrower term “peripheral.” In a footnote, Apple states that its
`construction is consistent with the definitions in the technical dictionaries, but Apple’s proposed construction
`is consistent with only one of the five the technical dictionaries quoted in Apple’s Markman Brief. Apple has
`not otherwise explained why it believes that BIOS should be construed to interact with peripheral devices
`only. The Court has not found any basis to support this interpretation.
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`Apple Inc. Exhibit 1009 Page 8
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`Case4:11-cv-06357-YGR Document107 Filed12/31/12 Page9 of 21
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`Apple points out that the definition supplied by the Patent Examiner is incomplete, referring
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`again to the Microsoft dictionary:
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`BIOS n. Acronym for basic input/output system. On PC-compatible computers, the
`set of essential software routines that tests hardware at startup, starts the operating
`system, and supports the transfer of data among hardware devices, including the date
`and time. The operating system date is initialized from the BIOS or Real Time Clock
`date when the machine is booted. Many older PCs, particularly those dating before
`1997, have BIOSs that store only 2-digit years and thus may have suffered from Year
`2000 problems. The BIOS is stored in read-only memory (ROM) so that it can be
`executed when the computer is turned on. Although critical to performance, the BIOS
`is usually invisible to computer users.
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`(Id. Ex. I (Microsoft Press Computer User’s Dictionary (5th ed. 2002)).)6
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`6 In addition to the dictionary definition used by the Patent Examiner, Apple offers four other dictionary
`definitions of the term BIOS:
`BIOS n. Acronym for basic input/output system. On PC-compatible computers, the set of
`essential software routines that test hardware at startup, start the operating system, and support
`the transfer of data among hardware devices. The BIOS is stored in ROM so that it can be
`executed when the computer is turned on. Although critical to performance, the BIOS is
`usually invisible to computer users.
`(Rahebi Dec., Ex. K (Microsoft Press Computer User’s Dictionary (3d ed. 1998)).)
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`A set of programs encoded in read-only memory (ROM) on IBM PC-compatible computers.
`These programs handle startup operations such as the power-on self-test (POST) and low-level
`control for hardware, such as disk drives, keyboards, and monitor. The BIOS programs of
`IBM personal computers are copyrighted, so manufacturers of IBM PC-compatible computers
`must create BIOSs that emulate the IBM BIOS or buy an emulation from companies, such as
`Phoenix Technologies and American Megatrends, Inc. ….
`(Id. Ex. F (Webster’s New World Dictionary of Computer Terms (6th ed. 1997)); id. Ex. G (Que’s Computer
`& Internet Dictionary (6th ed. 1995)).)
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`[A] set of procedures stored on a ROM chip inside IBM PC compatible computers. These
`routines handle all input-output functions, including screen graphics, so that programs do not
`have to manipulate the hardware directly ….
`(Id. Ex. H (Barron’s Dictionary of Computer and Internet Terms (5th ed. 1996)).)
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`On PC-compatible computers, the set of essential software routines that test hardware at
`startup, start the operating system, and support the transfer of data among hardware devices.
`The BIOS is stored in read-only memory (ROM) so that it can be executed when the computer
`is turned on. Although critical to performance, the BIOS is usually invisible to computer users.
`(Id. Ex. E (Microsoft Press Computer Dictionary (3d ed. 1997)).)
`
`The part of the system software of the IBM PC and compatibles that provides the lowest level
`interface to peripheral devices and controls the first stage of the bootstrap process, including
`installing the operating system. The BIOS is stored in ROM, or equivalent, in every PC. Its
`main task is to load and execute the operating system which is usually stored on the computer’s
`hard disk, but may be loaded from CD-ROM or floppy disk at install time.
`(Id. Ex. J (Free On-Line Dictionary of Computing (June 6, 1999)).)
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`Apple Inc. Exhibit 1009 Page 9
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`Apple proposes that BIOS be construed to operate only on IBM PC-compatible computers.
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`According to Apple, the plain and ordinary meaning of the term “BIOS” at the time of the invention,
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`as demonstrated by dictionary definitions is that BIOS is specific to the IBM PC-compatible
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`computer platform.
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`Ancora urges the Court to avoid using a dictionary to construe BIOS by arguing that the
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`Federal Circuit in Phillips stated that using a dictionary to alter the claim term violates the public
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`notice function of the patent. The problem identified in Phillips is that a dictionary definition
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`oftentimes will be overly broad and when taken out of the context of the patent at issue can lead to
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`an “unduly expansive” construction of the claim term. 415 F.3d at 1321. The opposite problem is
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`presented here. Apple is resorting to the dictionary definition to narrow the construction of the term
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`because it believes that the Patent Examiner gave BIOS an unduly expansive construction.
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`Ancora argues that the Examiner defined BIOS broadly, not limited to IBM PC-compatible
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`computers, and that the claim itself is not limited to a brand of computer but the “BIOS of a
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`computer.”7 Ancora argues that virtually all computers have BIOS, including the accused devices
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`(iPhone, Apple laptops and Apple desktops).8
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`As set forth above, “BIOS” stands for Basic Input/Output System; it is software code. No
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`one disputes that a person of ordinary skill in the art reading the Claim in the context of the
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`specification and prosecution history would understand the “BIOS” to be the location in the
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`computer where the software code was stored. The inventive aspect of the ’941 Patent was to write
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`information onto unused memory in the BIOS area of the computer. The limiting aspect of the
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`invention is to store information in the BIOS, not the type of computer that runs BIOS. The
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`technical dictionaries that Apple has offered into evidence do not convince the Court otherwise.
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`Northern District of California
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`United States District Court
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`7 Although Ancora argues that the Patent Examiner gave BIOS a specific definition, “the set of essential
`software routines that test hardware at startup, start the operating system, and support the transfer of data
`among hardware devices,” Ancora argues for an entirely different construction of BIOS tethered only to
`Apple’s proposed construction. Other than to argue that its patent applies to non-IBM PC-compatible
`computers, Ancora does not base its interpretation on any intrinsic evidence.
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`8 Ancora also offers evidence of a 1983 Commodore 64 computer that ran BIOS, and that during the mid-
`1990’s Apple’s Macintosh brand of computers, when operated in a PC-compatible mode, had BIOS. This
`extrinsic evidence both before and after the relevant time period does not reflect the usage or meaning in the
`art in 1998.
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`Apple Inc. Exhibit 1009 Page 10
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`

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`Case4:11-cv-06357-YGR Document107 Filed12/31/12 Page11 of 21
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`These dictionaries indicate that PC-compatible computers run BIOS. However, exclusionary
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`language is not found in the proffered dictionaries, i.e. the dictionaries do not indicate that the non-
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`IBM PC-compatible computers do not or cannot run BIOS, nor that a person of ordinary skill in the
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`art would have understood as much. Accordingly, the Court will not define BIOS by the hardware
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`architecture of the computer on which it runs.
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`The Court rejects both parties’ proffers and provides the following construction:
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`“BIOS” is an acronym for Basic Input/Output System. It is the set of essential startup
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`operations that run when a computer is turned on, which tests hardware, starts the operating system,
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`and supports the transfer of data among hardware devices.
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`C.
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`FOURTH DISPUTED CLAIM TERM/ PHRASE – “PROGRAM” (CLAIMS 1-3, 5-17)
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`The parties dispute whether an “operating system” is a type of “program” as that term is used
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`in the ’941 Patent. The parties’ proposed constructions are shown below:
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`APPLE’S PROPOSED
`CONSTRUCTION
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`ANCORA’S PROPOSED
`CONSTRUCTION
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`Software application that interacts
`with and relies on the operating
`system
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`A set of instructions that can be
`executed by a computer.
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`Apple argues that (i) using the term program in the specification to refer only to application
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`programs and then (ii) emphasizing the distinction during prosecution demonstrates a narrow use of
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`the term. Ancora argues that (i) the specification does not clearly set forth a narrower definition of
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`the term; (ii) the prior art reference over which the Examiner allowed the ’941 Patent to issue
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`described an operating system as a type of program; and (iii) there is no disavowal of the plain and
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`ordinary meaning of the term in the prosecution history.
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`According to Ancora, “[e]very person of skill in the computer field knows that a ‘program’
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`is: ‘a set of instructions that can be executed by a computer.’” (Ancora’s Br. 12.) The construction
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`that Ancora advances is the definition in the Microsoft Computer Dictionary, 5th Edition, 2002. By
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`contrast, Apple argues that to a person of skill in the field, the term “program” as used in the ’941
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`Patent means a “software application that interacts with and relies on the operating system.” As
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`explained below, Ancora’s definition is too broad, while Apple’s may be misunderstood by a jury.
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`Northern District of California
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`United States District Court
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`Apple Inc. Exhibit 1009 Page 11
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`

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`The first step is to look at the language of the use of the term in the claim itself: the ’941
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`Patent teaches a method of “… selecting a program residing in the volatile memory, … verifying the
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`program …, and acting on the program.”
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`Ancora argues that no construction is necessary because the term “program” is a com