IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re U.S. Patent of:
`
`Mullor et al.
`
`REQUEST FOR EX PARTE
`REEXAMINATION UNDER
`35 u.s.c. §302
`
`U.S. Patent No: 6,411,941
`
`Reexamination Request Control No:
`
`Not Yet Assigned
`
`Filed: October 1, 1998
`
`Issued: June 25, 2002
`
`For: METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSE LIMITATION
`
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`Dear Sir:
`
`Pursuant to 35 U.S.C. §§ 302-307 and 37 C.F.R. § 1.510, requester Microsoft
`
`Corporation hereby requests ex parte reexamination of claims 1-19 of United States
`
`Patent No. 6,411 ,941 ("the '941 patent"), which issued on June 25, 2002, to Miki Mullor
`
`and Julian Valiko. The '941 patent was based on an application filed October 1, 1998
`
`and claims priority to an application filed in Israel on May 21, 1998. A copy of the '941
`
`patent is attached to this request as Exhibit A. The '941 patent is currently the subject
`of pending litigation including Ancora Technologies, Inc. v. Toshiba America Information
`Systems, Inc. eta/., No. SACV 08-0626-AG (C.D. Cal.). 1 The original complaint for the
`
`1 The lawsuit was recently transferred to the Western District of Washington, and is now captioned as
`Ancora Technologies, Inc. v. Toshiba America Information Systems, Inc. eta/., No. 2:09-cv-00270-MJP
`(W.O. Wa.)
`
`-1-
`
`Page 1
`
`HTC EX. 1004
`HTC v. Ancora
`US Patent No. 6,411,941
`
`

`

`In the pending litigation, the patent owner has proposed
`suit is attached as Exhibit B.
`an extremely broad claim construction that expands the scope of the patent well beyond
`the scope that was argued during the original prosecution of the '941 patent. Had the
`patent owner asserted such scope during the original prosecution, these claims would
`not have been allowed. Even with the narrower construction that the patent owner
`originally argued, the '941 patent was anticipated by the references discussed below.
`Given the current, broad claim construction that patent owner now asserts, the invalidity
`of the patent's claims is even clearer. An opening Markman brief filed by patent owner
`(hereinafter "Patent Owner's Markman Brief') is attached to this request as Exhibit C.2
`The substantial new questions of patentability raised in this request involve prior
`art questions that were not considered during prosecution of the application leading to
`the '941 patent. As detailed below, claims 1-19 of the '941 patent were anticipated
`under 35 U.S.C. § 102 in view of a patent to Robert Schwartz et al. filed in 1997.
`Claims 1-19 were also anticipated under § 102 in view of a patent to David Lewis filed in
`1994.
`
`During the original prosecution of the '941 patent, patent owner made strong
`statements distinguishing low-level programs that regularly access the BIOS from
`operating system level programs such as the claimed system. Amendment for
`Application No. 09/164,777 filed on February 5, 2002, at 5 (attached as Exhibit D).
`However, patent owner now asserts that claim 1 of the '941 patent covers any system
`that verifies a program (i.e. any set of instructions that can be executed by a computer)
`using information stored in a non-volatile memory area of the BIOS of a computer.
`Patent Owner's Markman Brief at 14-21. Thus, patent owner's arguments during
`prosecution are clearly no longer operative. Requestors respectfully assert that this
`changing story should be considered when evaluating the substantial new question of
`patentability and in any resulting reexamination.
`The prior art references cited in this request raise substantial new questions of
`patentability that were not considered during prosecution of the application leading to
`
`2 37 C.F.R. § 1.104(c)(3) (2007) ("In rejecting claims the examiner may rely upon admissions by the
`applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability").
`
`-2-
`
`Page 2
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`

`

`the '941 patent and more closely match the claimed limitations than the references
`previously considered by the PTO in connection with the '941 patent.
`The prior art references on which this request is based, all of which pre-date the
`May 21, 1998 priority date of the '941 patent, are as follows:
`
`• U.S. Patent No. 6, 153,835, "System and Method for an Electronic Postage Scale
`with Variable Function Keys and Window Screens," issued to Schwartz et al. on
`November 28, 2000, based on an application filed June 7, 1995 and claiming
`priority to an application filed October 14, 1993 ("Schwartz '835") (attached as
`Exhibit E);
`
`• U.S. Patent No. 5,734,819, "Method and Apparatus for Validating System
`Operation," issued to David Otto Lewis on March 31, 1998, based on an
`application filed October 12, 1994 ("Lewis '819") (attached as Exhibit F);
`The remainder of this request is organized as follows. Section I provides an
`overview of the '941 patent. Section II provides an overview of the prior art cited in this
`request. Section Ill summarizes the substantial new questions of patentability
`introduced by this request. Section IV explains how that art compares to the claims at
`issue (detailed claim charts appear in Exhibit 1). Section V concludes with a request
`that this request be granted and that the claims at issue be rejected.
`OVERVIEW OF THE '941 PATENT
`I.
`
`The '941 patent is directed to a method for enforcing a license restriction on a
`software program. '941 Patent at Abstract. The system uses a verification structure in
`a non-volatile memory area of the BIOS of a computer to verify that the computer is
`licensed to run the software program.
`/d. at C6:59-67. The specification of the '941
`patent does not define "BIOS"; however, the term is well-known in the computer
`industry. According to the IBM Dictionary of Computing (excerpts attached as Exhibit
`G), the Basic Input/Output System (BIOS) is "[c]ode that controls basic hardware
`operations, such as interactions with diskette drives, hard disk drives, and the keyboard.
`IBM Dictionary 56, 65. As described in the '941 patent's specification, the BIOS may
`include both a read-only memory (ROM) section and an electrically erasable
`programmable read-only memory (EEPROM) section.
`In addition, during prosecution
`patent owner distinguished the claims over a prior art reference that stored license
`
`-3-
`
`Page 3
`
`

`

`information in persistent storage on a hard drive or magnetic disk drive. Amendment for
`Application No. 09/164,777 filed on February 5, 2002, at 5-7. Thus, "BIOS", as used in
`the '941 patent, apparently refers to a memory area in a computer that encompasses
`multiple non-volatile memory components but does not include a hard drive. The
`purported inventive aspect of the method is that it uses a writeable portion of the BIOS
`to store a verification structure for the software program. /d.
`Figure 2 below shows the basic process for executing the method of the '941
`patent. As shown in the figure, the process is a simple sequence of selecting a
`software program, setting up a verification structure in the BIOS, verifying the program
`'941 patent at C6:4-52.
`using the verification structure, and acting on the verification.
`
`During the setup phase, the system creates a verification structure and stores the
`structure in a non-volatile area of the BIOS.
`/d. at C6:18-28. During the verification
`phase, the system verifies the license using the stored verification structure.
`/d. at
`C6:29-39. After the verification phase, the system acts on the program based on the
`verification. /d. at C6:40-52.
`
`-4-
`
`Page 4
`
`

`

`SELECTING J
`
`lr
`
`SETTING UP J
`
`17
`
`1 8
`
`~
`
`VERIFYING J
`
`1 9
`
`2 0
`
`ACTING J
`
`Claim 1 is directed to exactly this process.3 Claim 1 reads as follows:
`
`1. A method of restricting software operation within a
`license for use with a computer including an erasable, non(cid:173)
`volatile memory area of a BIOS of the computer, and a
`volatile memory area; the method comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS,
`the
`verification structure accommodating data
`that
`includes at least one license record,
`
`3 In the context of reexamination, the "broadest reasonable interpretation" standard provided in MPEP
`§2111 for claim interpretation during patent examination is used, and the statutory presumption of validity
`for issued patents does not apply. MPEP §2258(1)(G). The standard applied by a court during litigation
`may or may not overlap with MPEP §2111. The requester expressly reserves the right to argue a claim
`construction in the pending litigation that is different from a claim interpretation in this request.
`
`-5-
`
`Page 5
`
`

`

`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.
`
`The method of claim 1 consists first of selecting the program whose license is
`being verified. According to patent owner, this step simply means "running a program in
`the volatile memory." Patent Owner's Markman Brief at 16.
`In the next step, the
`system creates the verification structure (including a license record) in a non-volatile,
`(Although the claim recites that this step is
`erasable memory area of the BIOS.
`performed by an "agent", the specification provides no information on what the "agent"
`is. However, according to patent owner's statements, the "agent" is a program that
`performs a task. /d. at 17.) In the next step, the system verifies the program using the
`verification structure. The final step of the method is acting on the program based on
`the verification. This may include, for example, running the program if the verification is
`successful.
`Most of this method was well-known in the art well before the filing of the '941
`patent in 1998.
`In fact, the '941 patent itself acknowledges this in the background
`section, which states that "software based products have been developed to validate
`authorized software usage by writing a license signature onto the computer's volatile
`memory (e.g. hard drive)." 4 See '941 patent at C1 :19-21. Thus, based on patent
`owner's own admitted prior art, the innovation of claim 1 can only be that the license
`information was stored in a writeable memory area of the BIOS, rather than on a hard
`drive.
`
`Claim 18, which is the only other independent claim, reads as follows:
`
`18. A method for accessing an application software
`program using a pseudo-unique key stored in a first non(cid:173)
`erasable non-volatile memory area of a computer, the first
`non-volatile memory
`area
`being
`unable
`to
`be
`programmatically changed, the method, comprising:
`
`4 It should be noted that the specification misuses the term "volatile" here. As defined by the IBM
`Dictionary of Computing, "volatile storage" is "a storage device whose contents are lost when power is cut
`off. Contrast with nonvolatile storage".
`IBM Dictionary of Computing at 740. A hard drive is therefore
`non-volatile storage.
`
`-6-
`
`Page 6
`
`

`

`loading the application software program residing in a non(cid:173)
`volatile memory area of the computer;
`
`using an agent to perform the following steps:
`
`extracting license information from software program;
`
`encrypting
`information using the pseudo(cid:173)
`license
`unique key stored in the first non-volatile memory
`area;
`
`storing the encrypting license information in a second
`erasable, writable, non-volatile memory area of the
`BIOS of the computer;
`
`the application software
`subsequently verifying
`program based on the encrypted license information
`stored in the second erasable, writable, non-volatile
`memory area of the BIOS; and
`
`acting on the application software program based on
`the verification.
`
`The method operates on a computer system that has a pseudo-unique key5
`stored in a non-erasable section of memory. According to the specification of the '941
`patent, the pseudo-unique key may be a bit string which "uniquely identifies each first
`nonvolatile memory" or is "of sufficient length such that: there is an acceptably low
`probability of a successful unauthorized transfer of licensed software between two
`'941 patent at C4:10-18.
`In addition, the key for identifying the
`computers .... "
`computer "may be composed of the pseudo-unique key exclusively, or, if desired, in
`combination with information, e.g., .information relating to the registration of the
`user .... " /d. at C4:6-10.
`The application being accessed is loaded from the nonvolatile memory. An
`agent then executes a set of steps. As discussed above, according to patent owner's
`statements, this simply means that a software program performs the steps.
`In any
`event, the agent extracts license information from the program and encrypts the license
`
`5 Interestingly, Patent Owner's Markman brief proposes that "pseudo-unique key" be construed to mean
`"data that is not necessarily unique." Patent Owner's Markman Brief at 10.
`
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`
`Page 7
`
`

`

`information using the key. The encrypted information is then stored in a writeable, non(cid:173)
`
`volatile memory area in the BIOS of the computer.
`
`At a later point, the agent verifies the program based on the encrypted license
`
`information. According to the specification, a system may verify a program by again
`
`extracting the license information from the program and re-generating the encrypted
`
`license information using the pseudo-unique key. The system then compares the
`
`generated information to the stored information.
`
`If the stored encrypted license
`
`information has been copied to a different computer, the re-encrypted data will differ
`
`from the stored data because the key is different. The program may then be terminated
`
`based on the failure to match.
`
`It is important to note that, despite patent owner's contentions during prosecution,
`
`software developers could use well-known techniques to develop software programs
`
`that accessed data in the BIOS of a computer. For example, a contemporaneously
`
`published textbook describes methods for using the C programming language to access
`
`the computer's BIOS data area to determine information about the computer's
`
`hardware, such as whether a LPT (line printer) was installed. MUHAMMAD Au MAZIDI AND
`JANICE GILLISPIE MAZIDI, THE 80X86 IBM PC AND COMPATIBLE COMPUTERS (VOLS. I & II):
`ASSEMBLY LANGUAGE, DESIGN, AND
`INTERFACING 808-816 (2d ed. 1998) ("Mazidi")
`
`(attached as Exhibit H).
`II.
`PRIOR ART OVERVIEW
`
`A.
`
`The Schwartz '835 Patent
`
`The Schwartz '835 patent (assigned to Ascom Hasler Mailing Systems) disclosed
`an electronic postage scale system.6 Schwartz '835 at Abstract. The postage scale
`was controlled by application software that could be updated from time to time.
`
`Schwartz '835 at C1 0:15-20. During the update process, the system required a user to
`
`enter an authorization code to prove that the software was licensed. Figure 8 of the
`
`patent depicted a general structure of the electronic components of the device.
`
`6 Schwartz '835 claims priority as a division of an application filed on October 14, 1993 and is therefore
`prior art to the '941 patent under 35 U.S.C. § 102(e}.
`
`-8-
`
`Page 8
`
`

`

`

`

`

`

`B.
`
`The Lewis '819 Patent
`
`Like Schwartz '835, the Lewis '819 patent (assigned to IBM) also disclosed a
`method and system for validating aspects of a computer system. 7 Lewis '819 at
`Abstract. According to Lewis '819, the invention met a need for a system that used a
`non-volatile memory to store critical information and was able to monitor the critical
`information to "detect whether the information has been altered so the system may not
`be run in its altered state." /d. at C2:66 to C3:3. Figure 1 shows a logical diagram of
`the system disclosed by Lewis '819.
`
`12
`
`"
`
`\14
`
`MEMORY
`
`CPU
`
`10.1'
`
`20
`~·
`NON-VOLATILE .
`MEMORY
`
`\16
`
`('1 8
`
`CHIP 10
`REGISTER
`
`DEVICE
`
`Fig. 1
`As shown in Figure 1 , the system included a CPU 14 and a memory unit 12 that
`"contain[ed] instructions and programs that [were] executed in CPU 14." /d. at C4:23-
`27. The system also included a non-volatile memory (NVM) 20 and a system device 16
`that contained a chip ID register 18. /d. at Fig. 1; at C4:27 -41. The chip ID register 18
`stored a unique chip identifier. /d. at C4:34-35. The system used system information,
`including device type and the chip ID, to generate a Message Authentication Code
`(MAC), which was an encrypted message used to verify the system. /d. at C2:7-20; at
`C4:55 to C5:9. The resulting MAC was then stored in the NVM. /d. at C5:8-9.
`
`7 Lewis '819 issued on March 31, 1998 from an application filed on October 12, 1994 and is therefore
`prior art to the '941 patent under 35 U.S.C. § 102(a) and§ 102(e).
`
`-11-
`
`Page 11
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`

`

`

`

`11
`
`16
`
`• Anticipated by Lewis '819
`• Anticipated by Schwartz '835
`• Anticipated by Lewis '819
`• Obvious in view of Lewis '819
`• Obvious in view of Schwartz '835
`• Anticipated by Lewis '819
`• Obvious in view of Lewis '819
`
`A.
`
`Schwartz '835 Discloses the Details of the Issued Claims and Raises
`a Substantial New Question of Patentability
`
`Schwartz '835 was filed in June 1995, well before the earliest priority date of the
`
`'941 patent. Schwartz '835 disclosed each of the elements of independent claim 1. In
`
`particular, Schwartz '835 disclosed a system and method for restricting software
`
`operation within a license for use on a personal computer having an erasable, non(cid:173)
`
`volatile memory area of a BIOS. Schwartz '835 at C12:29-40; at C7:48-59; at C8:13-15.
`
`Schwartz '835 disclosed that the method began when the system selected a program
`
`residing in memory by running the program.
`
`/d. at C8:26-31. Schwartz '835 also
`
`disclosed that the system set up a verification structure in the non-volatile memory area
`
`of the BIOS by encrypting system data and storing the encrypted information in a flash
`
`EEPROM.
`
`/d. at C1 0:21-54; at C7:48-59. At a later time, the system verified the
`
`software using the stored verification structure and acted on the program according to
`
`the verification. /d. at C11:24-40; at C12:8-14. Schwartz '835 disclosed the elements of
`
`claim 18 for similar reasons.
`
`In addition, Schwartz '835 anticipated or made obvious each of dependent claims
`
`2-17 and 19. Thus, Schwartz '835 raises a substantial new question of patentability for
`
`each of the claims of the '941 patent.
`B.
`Lewis '819 Discloses the Details of the Issued Claims and Raises a
`Substantial New Question of Patentability
`
`Lewis '819 was filed in October 1994 and issued in March 1998 and was,
`
`therefore, filed and issued before the earliest priority date of the '941 patent. Lewis '819
`
`also disclosed each of the elements of independent claims 1. Specifically, Lewis '819
`
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`

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`disclosed a system and method for restricting software operation within a license for use
`on a personal computer having an erasable, non-volatile memory area of a BIOS.
`
`Lewis '819 at Abstract; at C1:8-16; at C3:6-15; at C4:40-54. Lewis '918 also disclosed
`that the system operated by selecting a program residing in memory. /d. at C4:23-31; at
`
`C5:10-20; at C5:27-31. The system then set up a verification structure in the non(cid:173)
`
`volatile memory of the BIOS by generating an encrypted Message Authentication Code
`
`/d. at C2:7-48; at
`(MAC) using a unique chip identifier and other system information.
`C4:55 to C5:9. Lewis '819 further disclosed that the system verified the software using
`
`the verification structure (the stored encrypted MAC) and acted on the program
`according to the verification. /d. at C5:10-50. Lewis '819 also disclosed the elements of
`
`claim 18 for similar reasons.
`
`In addition, Lewis '819 anticipated or made obvious each of dependent claims 2-
`
`17 and 19. Thus, Lewis '819 raises a substantial new question of patentability for each
`of the claims of the '941 patent.
`IV.
`EXPLANATION OF PERTINENCY AND MANNER OF APPLYING THE CITED
`PRIOR ART
`
`The claim charts in attached Exhibit I show how each of the limitations of claims
`
`1-19 of the '941 patent are found in the disclosures of the prior art references cited in
`
`this request. The explanation below summarizes the analysis in those charts. In order
`
`to simplify the discussion, independent claims 1 and 18 are discussed before the
`
`remaining dependent claims. In addition, related claims have been combined for clarity.
`A.
`Unpatentability of Claim 1
`
`1.
`
`Anticipation of Claim 1 by Schwartz '835
`
`Claim 1 was unpatentable because it was anticipated by the disclosure of the
`Schwartz '835 patent. Schwartz '835 disclosed a hardware and software system that
`
`included features well beyond the subject matter of the '941 patent. However, Schwartz
`'835 specifically discussed and disclosed a verification system that employs a method
`identical to the method recited in claim 1. This result is to be expected, given the
`
`breadth of the patent owner's asserted construction of claim 1 and the common
`purposes of the '941 patent and the Schwartz '835 reference.
`
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`

`

`a.
`
`"[R]estricting 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" of Claim 1
`
`Schwarz '835 disclosed the preamble of claim 1. Schwartz '835 stated that the
`verification requirement was "desirable in that it help[ed] deter unauthorized copying of
`In
`software of system 10 onto other similar systems." Schwartz '835 at C12:29-31.
`particular, "even though the software can be copied onto the similar systems, the latter
`would not be operational without a proper authorization number .... " /d. at C12:31-35.
`In addition, Schwartz '835 also disclosed various hardware components that meet the
`requirements of the preamble, including a writeable flash EEPROM used to store part of
`the BIOS (/d. at C7:50-57) and a static random access memory (SRAM) that was used
`as work space when the system was active. /d. at C8:19-20. Accordingly, the system
`of Schwartz '835 meets the preamble of claim 1.
`b.
`"[S]electing a program residing in the volatile memory"
`of Claim 1
`
`According to patent owner's prior statements, "selecting a program" simply
`means "running a program in the volatile memory." Patent Owner's Markman Brief at
`16. Schwartz '835 disclosed that the computer system executed an application program
`to perform various tasks on the system. /d. at C8:26-31.
`c.
`"[U]sing an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS ... " of Claim ·
`1
`
`Schwartz '835 disclosed an authorization process that was executed when the
`system software was updated. Schwartz '835 at C10:15-20. To enable the updated
`software, the system required a user to enter an authorization number.
`/d. at C10:21-
`25. The system then generated an electronic signature based on data stored on the
`device, such as the serial number and model number of the device.
`/d. at C10:29-42.
`The system compared the authorization number to the electronic signature and, if the
`in a memory buffer in the
`numbers matched, stored the electronic signature
`configuration module.
`/d. at C10:49-54; at C11 :36-38. As discussed below, the
`electronic signature functioned as a verification structure that the system could use to
`confirm that operation is authorized. Figure 9 shows that the configuration module is
`
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`Page 15
`
`

`

`

`

`serial number, model number, etc.). /d. at C11 :24-36. The system then compared the
`generated electronic signature to the electronic signature stored in the configuration
`module.
`/d. at C11 :36-38. Based on the result of the comparison, the system could
`become operational or request a new authorization. /d. at C11 :38-40.
`e.
`"[A]cting on the program according to the verification"
`of Claim 1
`
`As stated above, Schwartz '835 disclosed that the system acted on the program
`based on the result of the verification. After comparing the generated electronic
`signature to the stored signature, the system either began operating normally or
`requested a new authorization number based on the result of the comparison.
`/d.
`Schwartz '835 therefore disclosed every element of claim 1 .
`2.
`Anticipation of Claim 1 by Lewis '819
`
`Claim 1 was also unpatentable because it was anticipated by the disclosure of
`Lewis '819. The stated object of the invention disclosed by Lewis '819 is nearly
`identical to the goals of both Schwartz '835 and the '941 patent: "to provide a computer
`system having a non-volatile memory with security information written into the non(cid:173)
`volatile memory and a way of detecting when that information has been altered so as to
`prevent operation of any portion of the computer system once tampering has been
`detected." Lewis '819 at C3:10-15. As discussed below, Lewis '819 used similar
`components and steps to achieve this object.
`a.
`"[R]estricting 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" of Claim 1
`
`Similar to the '941 patent, Lewis '819 described a system for protecting from
`unauthorized use to "prevent operation of [a] computer system once tampering has
`been detected." Lewis '819 at.1:13-15. As shown in Figure 1 below, the system was
`implemented in a computer with a memory 12 and a non-volatile memory (NVM) 20.
`The NVM stored authorized system information, such as device type and device serial
`number, and verification information generated by the system. /d. at C4:40-54.
`
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`Page 17
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`

`

`<;1 2
`
`MEMORY
`
`<;14
`
`CPU
`
`10.1'
`
`Fig. 1
`
`20
`~·
`NON-VOLATILE .
`MEMORY
`
`s1s
`('18
`
`CHIP 10
`REGISTER
`
`DEVICE
`
`Although Lewis '819 did not explicitly disclose that the NVM stored the BIOS, this
`was inherently present in the reference. Lewis '819 discloses that the NVM can be an
`EEPROM flash type of memory. Lewis '819 at C1:31-37. As discussed above, the '941
`patent did not provide a clear definition the term "BIOS", but did state that the BIOS may
`include multiple non-volatile memory sections (e.g., a ROM section and an EEPROM
`'941 patent at C5:12-16. These sections were separate from the "volatile
`section}.
`memory area", such as the internal RAM of a computer. During prosecution, patent
`owner stated that "all computers must have a BIOS" and that the BIOS was located in
`storage separate from storage used by the operating system for applications.
`Amendment for Application No. 09/164,777 filed on February 5, 2002, at 5. In the case
`of the Lewis '819 patent, the NVM 20 stores system- or hardware-level information (e.g.,
`information related to the device 16}, while the memory 12 stores "instructions and
`programs that are executed in CPU 14." Lewis '819 at C4:25-27; at C4:40-48. Thus,
`Lewis '819 inherently discloses that the NVM can be an EEPROM storing BIOS for a
`computer, even though it does not use the exact term.
`Alternatively, it would have been obvious to one skilled in the art at the time of
`the invention to use the NVM EEPROM to store the BIOS of the computer system. As
`admitted by the patent owner, BIOS stored in an NVM EEPROM flash type of memory
`was a standard component of computer systems at the time of invention of the '941
`
`-18-
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`Page 18
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`

`

`e.
`
`"[A]cting on the program according to the verification"
`of Claim 1
`
`As noted above, in steps 414 and 416 of Figure 4, the system aborts if the two
`values do not compare. /d. at C5:38-40.
`B.
`Unpatentability of Claim 18
`
`1.
`
`Anticipation of Claim 18 by Schwartz '835
`
`Claim 18 is the second independent claim in the '941 patent. It is equally invalid
`for the same reasons discussed above. The method of claim 18 includes steps in which
`an agent encrypts the license information and stores the encrypted information in an
`erasable, writeable, non-volatile memory area of the BIOS. The system then uses the
`stored information to verify the program and acts on the program based on the
`verification.
`
`a.
`
`"A method for accessing an application software
`program using a pseudo-unique key stored in a first
`non-erasable memory area of a computer" of Claim 18
`
`This preamble is disclosed by Schwartz '819. As discussed above, Schwartz
`'819 described (among other things) a system for controlling the application software to
`limit its use to a single authorized device. Schwartz '835 at Abstract. Schwartz '835
`further disclosed that the computer was identified by a unique serial number, which was
`"permanently" stored in a read-only memory (ROM). Schwartz '835 at C7:48-50.
`b.
`"[L]oading an application program" of Claim 18
`
`Schwartz '835 disclosed that the computer system executed an application
`program to perform various tasks on the system. /d. at C8:26-31. Thus, this step was
`disclosed by Schwartz '835 in numerous places in the reference.
`"[E]xtracting license information" of Claim 18
`c.
`
`Schwartz '835 disclosed that the system began the verifying process by reading
`system and software information, including the serial number of the device and version
`numbers of several software components. Schwartz '835 at C1 0:29-38. Thus,
`Schwartz '835 meets this element of claim 18.
`
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`
`Page 21
`
`

`

`d.
`
`"[E]ncrypting license information using the pseudo(cid:173)
`unique key" of Claim 18
`
`Claim 18 specifies encrypting "using" the pseudo-unique key. Under the
`broadest reasonable interpretation used for interpreting claims during prosecution, this
`element would clearly be met by the Schwartz '835 system, which generated the
`electronic signature by encrypting system information that included a unique serial
`number stored in the ROM. /d. at C7:48-50; at C1 0:29-38.
`e.
`"[S]toring the encrypting license information" of Claim
`18
`
`This element is disclosed by the reference for the same reasons as the "setting
`up" step of claim 1 . Schwartz '835 states the system stored the encrypted electronic
`signature in the configuration module, which is stored on the same memory component
`as the BIOS. /d. at C1 0:49-54 ("If the two signatures match, the authorization number is
`declared valid; the authorization number will then be stored in a first memory
`buffer .... "); at C11 :36-40 ("The electronic signature, thus generated, is compared with
`the electronic signature stored in configuration module 307.").
`f.
`"[S]ubsequently verifying the application software
`program based on the encrypted license information" of
`Claim 18
`
`Schwartz '835 disclosed that the system used the electronic signature to verify
`that the software was authorized to operate. /d. at C11 :25-40. In particular, the system
`read system information, including the serial number and software version numbers,
`from the memory and generated an electronic signature based on the newly read
`values.
`/d. at C11 :24-36. The system then compared the generated electronic
`signature with the electronic signature stored in the configuration module.
`/d. at
`C11 :36-38.
`
`g.
`
`"[A]cting on the application software program based on
`the verification" of Claim 18
`
`Schwartz '835 disclosed that the system acted based on the verification by either
`aborting operation or prompting for a new authorization number. /d. at C11 :38-40.
`
`-22-
`
`Page 22
`
`

`

`2.
`
`Anticipation of Claim 18 by Lewis '819
`
`a.
`
`"A method for accessing an application software
`program using a pseudo-unique key stored in a first
`non-erasable memory area of a computer" of Claim 18
`
`As discussed above, Lewis '819 described a system for protecting from
`unauthorized use to "prevent operation of [a] computer system once tampering has
`been detected." Lewis '819 at 1:13-15. As shown in Figure 1, the system included a
`chip ID register 18, which stored a unique chip identifier.
`/d. at C4:37-39. Lewis '819
`also described several methods for implementing the chip ID register so that the register
`could be made non-changeable. /d. at C1 :46 to C2:6.
`
`\12
`
`MEMORY
`
`\14
`
`CPU
`
`101'
`
`Fig. 1
`
`20
`(•
`
`NON-VOLATILE .
`MEMORY
`
`\16
`
`{18
`
`CHIP 10
`REGISTER
`
`DEVICE
`
`b.
`
`"[L]oading an application program" of Claim 18
`
`This step was disclosed by Lewis '819 in various places. See, e.g., Lewis '819 at
`C4:23-27 ("Computer system 1 0 includes a memory unit 12 connected to a central
`processing unit (CPU) 14. The memory unit 12 contains instructions and programs that
`are executed in CPU 14. ).
`
`c.
`
`"[U]sing an agent" of Claim 18
`
`This was disclosed by Lewis '819 for the same reasons as discussed in Section
`IV(A)