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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
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`HTC CORPORATION and HTC AMERICA, INC.
`Petitioners
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`v.
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`ANCORA TECHNOLOGIES INC.
`Patent Owner.
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`Case No. TBD
`U.S. Patent No. 6,411,941
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`DECLARATION OF JON B. WEISSMAN, PH.D.
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`HTC EX. 1008
`HTC v. Ancora
`US Patent No. 6,411,941
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`I, Jon B. Weissman, declare as follows:
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`I.
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`INTRODUCTION
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`
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`1.
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`I have been retained by Knobbe, Martens, Olson, & Bear LLP (“Knobbe
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`Martens”) on behalf of HTC Corporation and HTC America, Inc. (“HTC” or “Petitioner”) as an
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`independent expert consultant in this proceeding before the United States Patent and Trademark
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`Office. Although I am being compensated at my usual rate of $500 per hour for the time I spend
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`on this matter, no part of my compensation depends on the outcome of this proceeding, and I
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`have no other interest in this proceeding.
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`2.
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`I understand that this proceeding involves U.S. Patent No. 6,411,941 (“the ’941
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`patent”) (attached as Ex. 1001 to HTC’s petition). The application for the ’941 patent was filed
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`on October 1, 1998, as U.S. Patent Application No. 09/164,777, and the patent issued on June 25,
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`2002.
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`3.
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`I have been asked by counsel to review relevant materials and render my expert
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`opinion in connection with technical matters related to the petition for covered business method
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`review of the ’941 patent. My opinions are set forth below.
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`II.
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`QUALIFICATIONS
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`4.
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`My academic and professional background is in computer science, specifically in
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`the areas of distributed systems, file systems, and cloud computing. I am a leading researcher
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`and educator in these areas. My career includes over 20 years’ experience in industry and
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`academia. As a systems researcher, I have built practical systems that have application in a wide
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`variety of settings across many different types of distributed and parallel systems. For example, I
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`was a lead designer on one of the first distributed Grid computing systems that spanned the
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`Internet, called Legion. In my current work, I analyze and develop systems that allow mobile
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`1
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`devices to utilize remote cloud-computing resources to improve performance and save energy.
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`My curriculum vitae, which includes a more detailed summary of my background, experience,
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`and publications, is attached as Appendix A. Below I provide a short summary of my education
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`and experience, which I believe to be most pertinent to the opinions that I express.
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`5.
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`I received a Bachelor of Science degree in Applied Mathematics and Computer
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`Science from Carnegie Mellon University in 1984. I received a Master of Science degree in
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`Computer Science in 1989 and a Ph.D. degree in Computer Science in 1995, both from the
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`University of Virginia. My Ph.D. thesis involved developing the first automated scheduling
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`system for parallel and distributed applications across heterogeneous local and wide-area
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`networks. After completion of my Ph.D. program, I worked in industry for five years in the area
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`of distributed systems.
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`6.
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`In 1995, I joined the faculty of the University of Texas in San Antonio as an
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`Assistant Professor of Computer Science. In 1999, I joined the faculty of the University of
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`Minnesota as Assistant Professor of Computer Science, where I am currently Full Professor of
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`Computer Science – the highest academic rank at a top-tier research university. At the University
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`of Minnesota, I lead the Distributed Computing Systems Group, consisting of faculty colleagues
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`and both graduate and undergraduate students. I also serve as an investigator for the Center for
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`Research in Intelligent Storage (CRIS), sponsored by the National Science Foundation.
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`7.
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`I have published over 100 technical articles, most at highly competitive refereed
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`conferences and rigorously reviewed journals. I have recently served on the technical editorial
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`boards of several flagship journals, including IEEE Transactions on Parallel and Distributed
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`Systems and IEEE Transactions on Computers. I am currently the steering committee chair for
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`the ACM International Symposium on High Performance Parallel and Distributed Systems, the
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`flagship conference in my area.
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`8.
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`My research in computer systems has been funded by the National Institutes of
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`Health, NASA, the National Science Foundation, the Department of Energy, and the Air Force.
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`With regard to the subject matter of the ’941 patent relating to computer systems and security,
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`my collaborators and I have obtained over $2 million in grant funding, including:
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` National Institute of Health, ePCRN: Electronic Primary Care Research Network.
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`This project explores how to support secure query processing across distributed
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`networks.
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` National Science Foundation, “A Data Mining and Exploration Middleware for
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`Grid and Distributed Computing.” This project explores how to perform intrusion
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`detection in distributed systems.
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` National Science Foundation, “One Cloud Does Not Fit All: Minnesota
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`Integrated Cloud Systems Research Testbed (MIST).” This project seeks to build
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`a cloud testbed consisting of mobile devices and servers distributed around
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`campus with security as one of the principle research foci.
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` Air Force Office of Scientific Research, “Telecommunication Networks for
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`Mobile and Distributed Computing and Communications.” This project focuses
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`on developing software technology to securely connect mobile devices to servers
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`and developing the technology for applications to run across distributed networks,
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`such as the Grid.
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`9.
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`With regard to the subject matter of the ’941 patent relating to secure computing
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`systems, I have published several papers, here is a small subset:
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`3
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` “Nebula: Distributed Edge Cloud for Data Intensive Computing,” Mathew
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`Ryden, Kwangsung Oh, Abhishek Chandra and Jon B. Weissman, IEEE
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`International Conference on Cloud Engineering, March 2014, Boston, MA.
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` “A Dynamic Approach for Characterizing Collusion in Desktop Grids,” Louis-
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`Claude Canon, Emmanuel Jeannot, and Jon B. Weissman, 24th IEEE
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`International Parallel and Distributed Processing Symposium (IPDPS), 2010.
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` “Adaptive Reputation-Based Scheduling
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`on Unreliable Distributed
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`Infrastructures,” Jason D. Sonnek, Abhishek Chandra, and Jon B. Weissman,
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`IEEE Transactions on Parallel and Distributed Systems, 18(11), November
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`2007.
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`III. MATERIALS REVIEWED
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`10.
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`In forming my opinions, I have reviewed the ’941 Patent, the prosecution history
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`of the ’941 patent, and the exhibits to the covered business method patent petition that this
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`declaration supports.
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`IV.
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`SUMMARY OF FINDINGS
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`11.
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`It is my opinion, that Claims 1-19 of the ’941 patent are unpatentable under 35
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`U.S.C. § 101 because they are directed to ineligible subject matter—in particular, the abstract idea
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`of controlling software access based on data stored in a particular location. The basic concept is
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`not patentable and was well known in the prior art. Based on my review of the ’941 patent, I did
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`not find any concepts recited in the claims that were not conventional and well known to persons
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`of ordinary skill in the art before 1998.
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`12.
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`It is my opinion that the following references render obvious claims 1-3, 5-14,
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`and 16-17 of the ’914 patent:
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` European Patent Application Publication No. EP 0 766 165 A2 (“Hasebe”)
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`(“Hasebe,” Exh. 1012)
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` Desktop Management BIOS Specification Version 2.0, March 6, 1996 (“DMI
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`Spec.,” Exh. 1013)
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` U.S. Patent No. 5,724,425 (“Chang,” Exh. 1014).
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` Arbaugh, W.A et al., “A secure and reliable bootstrap architecture,” Security and
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`Privacy, 1997 IEEE Symposium on , pp.65-71, 4-7 May 1997 (“Arbaugh,” Exh.
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`1015).
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` U.S. Patent No. 5,748,804 (“Isikoff,” Exh. 1016).
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` PCT Publication No. WO 97/36241 (“Shipman,” Exh. 1017).
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` European Patent Application Publication No. EP 0 824 233 A2 (“Angelo,” Exh.
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`1018).
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`13.
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`It is my opinion, that the ’941 patent is invalid for lack of written description
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`support for the term “agent” that appears in all of the claims of the ’941 patent.
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`14.
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`Furthermore, it is my opinion that the term “agent” in the ’941 patent’s claims is a
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`mean-plus-function element and the ’941 patent specification fails to link any structure to the
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`recited function for the “agent,” which renders the claims invalid as indefinite.
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`V.
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`LEGAL STANDARDS
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`A.
`15.
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`Claim Construction
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`I have been informed that when construing claim terms in an unexpired patent, a
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`claim subject to covered business method patent review receives the broadest reasonable
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`construction in light of the specification of the patent in which it appears. I further understand
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`that the broadest reasonable construction is the broadest reasonable interpretation (BRI) of the
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`claim language, and that any term that lacks a definition in the specification is also given a broad
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`interpretation. I have also been advised that, at the same time, claim terms are given their
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`ordinary and accustomed meaning as would be understood by one of ordinary skill in the art. I
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`have been informed that the construction of a patent term applied during this proceeding may
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`differ from that in a district court proceeding.
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`16.
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`I have been informed that patentees may claim their inventions using purely
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`functional language, which is known as “means-plus-function” claiming. I have been informed
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`that courts determine whether a claim is a means-plus-function claim by examining whether the
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`claim itself recites sufficiently definite structure to perform the recited function. I have been
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`informed that if the claim recites sufficient structure to perform the recited function, it is not a
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`means-plus-function claim and vice versa. I also have been informed that a claim limitation
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`using the word “means” presumptively does not recite sufficient structure, while a claim
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`limitation that omits “means” presumptively recites sufficient structure. These presumptions can
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`be overcome by a showing that the claim either does, or does not, recite sufficient structure.
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`17.
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`I have been informed that a means-plus-function limitation includes two
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`components: (1) the recited function; and (2) the corresponding structure in the written
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`description of the patent for performing the function. I also have been informed that structure
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`corresponds to the claimed function only if the specification or the prosecution history clearly
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`links or associates that structure to the recited function.
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`18.
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`I have been informed that, if a means-plus-function element recites a computer-
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`implemented limitation, the structure disclosed in the specification must be more than simply a
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`general purpose computer or microprocessor. Instead, the specification must disclose an
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`algorithm for performing the recited function. I also have been informed that, although the
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`algorithm may be disclosed in any understandable terms, it must be capable of performing each
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`and every function to the full extent recited. I have been informed that this is true even if
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`implementing the recited function would be well understood by persons of ordinary skill in the
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`art. In other words, even if a person skilled in the art would readily know how to implement the
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`recited function, the specification still must explain how the recited function is actually
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`performed. I have been informed that an abstraction that merely describes the function of the
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`claimed means is not a sufficient disclosure of corresponding structure.
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`B.
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`Patent Ineligibility
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`19.
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`I understand that a patent claim is invalid under 35 U.S.C. § 101 if it claims a law
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`of nature, natural phenomenon, or an abstract idea. I further understand that a patent claim would
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`be ineligible for patent protection, and therefore invalid under 35 U.S.C. § 101, if it claims a
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`“building block of human ingenuity,” or if it merely recites a generic computer implementation
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`of an abstract idea. I further understand that a patent claim is invalid under 35 U.S.C. § 101, if,
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`setting aside any insignificant computer-based or field of use limitations, the claim is directed
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`solely to an abstract idea. Limiting an abstract idea to a single field of use or adding token post-
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`solution elements does not make an abstract concept patentable.
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`20.
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`I understand that a patent claim involving an abstract idea must contain other
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`elements or combination of elements, sometimes referred to as an “inventive concept,” that are
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`sufficient to ensure that the patent in practice amounts to significantly more than a patent upon
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`the abstract idea itself. I understand that an abstract idea with nothing more than well-
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`understood, routine, conventional activity added is not patentable. Similarly, merely requiring a
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`generic computer implementation fails to transform an abstract idea into a patent-eligible
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`invention.
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`21.
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`I further understand that in determining whether a patent claim recites patentable
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`subject matter, the claim must be considered as a whole.
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`C.
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`Obviousness
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`22.
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`I understand that a patent claim may also be invalid if the claimed invention
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`would have been obvious to a person of ordinary skill in the art at the time of the claim’s
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`effective filing date. I understand that an invention may be obvious if a person of ordinary skill
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`in the art with knowledge of the prior art would have conceived the claimed invention, even if all
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`of the limitations of the claim cannot be found in a single prior art reference.
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`23.
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`I understand that, in assessing whether a claimed invention would have been
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`obvious, the following factors are considered.
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`24.
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`First, I understand that the level of ordinary skill that a person working in the field
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`of the claimed invention would have had at its effective filing date must be considered.
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`25.
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`Second, I understand that the scope and content of the prior art must be
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`considered. I understand that, to be considered as prior art, a reference must be reasonably
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`related to the claimed invention, which means that the reference is in the same field as the
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`claimed invention or is from another field to which a person of ordinary skill in the art would
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`refer to solve a known problem.
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`26.
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`Third, I understand that the differences, if any, that existed between the prior art
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`and the claimed invention must be considered. I understand that the determination of such
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`differences should focus on the claimed invention as a whole.
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`27.
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`Fourth, I understand that other factors, known as “secondary considerations” of
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`non-obviousness, should be considered. I understand these factors to include: (i) commercial
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`success of a product due to the merits of the claimed invention; (ii) a long-felt need for the
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`solution provided by the claimed invention; (iii) unsuccessful attempts by others to find the
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`solution provided by the claimed invention; (iv) copying of the claimed invention by others; (v)
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`unexpected and superior results from the claimed invention; (vi) praise of the claimed invention
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`by others in the art; (vii) independent invention of the claimed invention by others before or at
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`about the same time as it was conceived by the named inventors; (viii) whether others expressed
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`surprise or disbelief regarding the invention; (ix) whether others sought or obtained rights to the
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`claimed invention from the patentee; and (x) whether the inventor proceeded contrary to
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`accepted wisdom in the art.
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`28.
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`I understand that it is not sufficient to prove a patent claim obvious to show that
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`each of its limitations was independently known in the prior art and that there also must have
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`been a reason for a person of ordinary skill in the art to have combined or modified the elements
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`or concepts from the prior art in the same way as in the claimed invention. In assessing whether
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`such a reason existed, I understand that the following may be considered: (i) whether the
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`combination or modification was merely the predictable result of using prior art elements
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`according to their known functions; (ii) whether the claimed invention provides an obvious
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`solution to a known problem in the art; (iii) whether the claimed invention applied a known
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`technique that had been used to improve a similar device or method in a similar way; (iv)
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`whether the prior art teaches or suggests making the combination or modification claimed in the
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`patent; (v) whether the prior art teaches away from combining elements in the claimed invention;
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`(vi) whether it would have been obvious to try the combination or modification, such as when
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`there is a design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions; and (vii) whether the combination or modification resulted more
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`from design incentives or other market forces.
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`29.
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`I understand that, when considering whether a claimed invention was obvious,
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`one should be careful not to use the benefit of hindsight and that, instead, one should put oneself
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`in the position of a person of ordinary skill in the art as of the effective filing date of the claimed
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`invention and should not consider what is known today or what is learned from the teaching of
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`the patent.
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`D. Written Description
`I have been informed that 35 U.S.C. § 112 requires the patent to contain an
`30.
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`adequate written description of the claimed invention. I understand that the purpose of the
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`written description requirement is to demonstrate that the inventor was in possession of the
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`invention at the time the patent application was filed, even though subsequently the claims may
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`have been changed or new claims may have been added. I understand that this requirement is
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`met if, at the time of filing of the application for a patent, a person of ordinary skill in the art
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`reading that application would have recognized that it described the invention as claimed. I
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`understand that the application does not need to specifically disclose a claim limitation so long as
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`a person of ordinary skill in the art would understand that the missing requirement is necessarily
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`implied in the application as originally filed. I understand that the written description inquiry
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`must take into account the entirety of what is disclosed within the specification. I understand that
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`it is insufficient that undisclosed subject matter would have been obvious to a person of ordinary
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`skill in the art. I understand that if a claim is proved to lack an adequate written description by
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`clear and convincing evidence, the claim is invalid.
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`E.
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`Indefiniteness
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`31.
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`I have been informed that a patent is invalid for indefiniteness if its claims, read in
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`light of the specification delineating the patent, and the prosecution history, fail to inform, with
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`reasonable certainty, those skilled in the art about the scope of the invention. In determining
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`whether a claim is indefinite, I have been informed that I should consider both the “intrinsic
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`evidence” (i.e., the claims, the specification, and the prosecution history) and the “extrinsic
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`evidence” (e.g., relevant publications contemporaneous with the filing date of the ’941 patent).
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`32.
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`I also have been informed that, if the specification fails to clearly link the recited
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`function of a means-plus-function limitation to structure for performing that function, the claim
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`containing that limitation is indefinite.
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`VI.
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`THE ’941 PATENT
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`A.
`33.
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`Overview of the ’941 Patent
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`The ’941 patent is directed to a method of restricting software operation within a
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`license limitation that is applicable for a computer having a first non-volatile memory area, a
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`second non-volatile memory area, and a volatile memory area. (’941 patent at Abstract.) The
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`method includes the steps of selecting a program residing in the volatile memory, setting up a
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`verification structure in the non-volatile memories, verifying the program using the structure, and
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`acting on the 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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`34.
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`The ’941 patent describes these four basic steps at 6:4-52. The “selecting” step is
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`broadly described in the specification to include “establishing a licensed-software-program” in
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`RAM or some other volatile memory. (’941 patent at 6:7-16.) I note that this description of
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`“selecting” is broader than what is actually claimed in claim 1 of the ’941 patent, which further
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`requires that the selected program “resides in the volatile memory.” Claim 18, on the other hand,
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`is closer to the broader “selecting” step in the specification. Specifically,
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`claim 18
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`require
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`“loading the application software program.”
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`35.
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`The “setting up” step is described as applying to the verification structure, similar
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`to how this step appears in claim 1. (’941 patent at 6:17-21.) The example in the specification
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`provides that setting up the verification structure includes “establishing or certifying” a key and
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`“establishing at least one license-record location.”
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`36.
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`The “verifying” step is a basic comparison step using the license record to verify
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`that the program is licensed. In on example, the verifying includes encrypting a license-record
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`and comparing the encrypted license-record to another encrypted license-record. (’941 patent at
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`6:29-39.) Alternatively, in another example, the step may include decrypting a license-record and
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`comparing that to another decrypted license-record. (’941 patent at 6:29-39.)
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`37.
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`The “acting” step is done by restricting the program operation in accordance with
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`the verification. (’941 patent at 6:40-42.) The ’941 patent also describes other steps that may be
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`part of the “acting,” including erasing the software, providing warnings, and placing charges on a
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`user’s account. (’941 patent at 6:46-52.)
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`38.
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`The ’941 patent describes implementing the steps of Figure 2 in a conventional
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`computer. (’941 patent at 1:44-52.) For example, Figure 1 depicts a schematic diagram of an
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`envisioned computer system and license bureau:
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`39.
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`The only aspect of the claimed method that the ’941 patent purports to be
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`
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`inventive is storing the license-record in non-volatile memory of the BIOS. For example, the
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`’941 patent states that prior art licensing systems existed. (’941 patent 1:19-32.) Additionally, the
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`’941 patent concedes that storing a key in the BIOS was also “conventional” technology. (’941
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`patent at 1:45-47.) The ’941 patent only describes one “advantage” of the described licensing
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`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
`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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`14
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`(’941 patent at 3:4-17.) The ’941 patent does not allege that any other part of the described
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`licensing system is new. In other words, the ’941 patent does not purport to include any advances
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`in storage technology, licensing technology, or cryptography. One of the named inventors’
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`testimony about the alleged invention in the ’941 patent is consistent with the above. (October
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`15, 2015 Deposition of Miki Mullor at 53:13-22, Exh. 1008; see also, 50:14-57:9, 89:20-90:8.)
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`B.
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`Prosecution History of the ’941 Patent
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`40.
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`As originally filed, the claims of the application that issued as the ’941 patent
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`were very broad and mirrored the steps of Figure 2. (Oct. 1, 1998 Application at 12, Exh. 1002.)
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`After a series of rejections based on prior art, a lack of written description, and lack of
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`enablement, the applicants made a series of amendments that included specifying that the
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`verification structure and license-record that it accommodated were stored in erasable, non-
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`volatile memory of the BIOS. Further, the claim amendments required that an “agent” is used to
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`setup the verification structure in the erasable, non-volatile memory of the BIOS.
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`41.
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`The Examiner found that all of the elements of the claims as issued were present
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`in the prior art. (Mar. 28, 2002 Notice of Allowance at 3-4, Exh. 1003.) The Examiner, however,
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`still allowed the claims because the claims used an “agent” to setup the verification structure.
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`(Mar. 28, 2002 Notice of Allowance at 3-4, Exh. 1003.) The Examiner believed that the prior art
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`did not enable an operating system to access memory of a BIOS to store license records. As I
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`explain below, however, the DMI Specification provided the exact functionality that the
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`Examiner found missing the prior art. Accordingly, the claims as issued should not have been
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`allowed as they are obvious.
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`VII. PERSON OF ORDINARY SKILL IN THE ART
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`42.
`
`In May 1998, a person of ordinary skill in the art of the ’941 patent would have a
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`bachelor’s degree in computer science or computer engineering, or in a related field, and about
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`two or three years of experience in industry with respect to software security. My opinions would
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`be the same, however, even if the level of ordinary skill varied somewhat with respect to subject
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`matter or experience. Industry experience and education may compensate for each other. For
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`example, a person with a master’s degree or the PhD in the relevant field with relevant
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`coursework may not need as much industry experience to be a person of ordinary skill in the art.
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`43.
`
`In 1998, I had a Ph.D. in Computer Science and had been designing, building, and
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`analyzing computer systems for about 15 years – teaching and working with individuals who met
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`the above criteria for persons of ordinary skill in the art. In particular, I have taught and worked
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`with distinct groups of graduate students that entered the graduate program with B.S. degrees in
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`CS/CE and several years of industry experience (two was a common length). Yet another group
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`entered with an M.S. degree without any prior industry training to obtain a Ph.D. Many of these
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`students found employment at companies that had an expressed interest in and need for skills
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`relating to operating systems and security in this time frame, further corroborating that these
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`were ordinarily skilled artisans.
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`VIII. CLAIM CONSTRUCTION
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`44.
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`I have been advised that the first step of assessing the validity of a patent claim is
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`to interpret or construe the meaning of the claim.
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`45.
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`I have reviewed the district court’s construction in its claim construction order.
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`With two exceptions, I generally agree that the court’s constructions are either consistent with
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`the broadest reasonable constructions for the disputed terms or the constructions are not relevant
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`to my analysis below.
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`46.
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`The first exception is that I understand the Federal Circuit reversed the court’s
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`construction of “program” so that it is not limited to applications. I have applied the Federal
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`Circuit’s construction in my analysis below.
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`47.
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`The second exception is that the district court’s construction of “license record” is
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`narrower than the broadest reasonable interpretation. While the construction is appropriate in
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`district court under the claim construction standard applied there, under the broadest reasonable
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`interpretation of “license record,” it means “information for verifying a licensed program.”
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`Based on my review of the ’941 patent and its prosecution history, I do not see any reason why
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`this is not a reasonable interpretation. Further, because it is both reasonable and broader than the
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`district court’s construction, it is the construction that a person of ordinary skill in the art would
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`have under the broadest reasonable interpretation standard.
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`48.
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`As explained below, I believe that the term “agent” is indefinite. To the extent,
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`however, that the term is found to be definite (and based on the lack of any description of the
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`“agent” in the ’941 patent specification) I have applied this term as being “a software and/or
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`hardware computational entity,” which is the broadest reasonable interpretation in light of the
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`specification. (See, e.g., Dictionary of Computer Science, Engineering, and Technology at 12
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`(2000), Exh. 1019 (defining “agent” as “a computational entity”).)
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`IX.
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`THE ’941 PATENT IS NOT DIRECTED TO PATENTABLE SUBJECT MATTER
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`49.
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`I have considered the factors set forth in the legal standards section above to
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`determine if the claims of the ’941 patent are directed to patentable subject matter. After
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`considering all of these factors, it is my opinion that Claims 1-19 of the ’941 patent are drawn to
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`abstract ideas with, at most, the addition of well-understood, routine, and conventional elements
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`that do not meaningfully limit the claim, and are therefore not patentable, as discussed below.
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`A.
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`The Claims of the ’941 Patent Are Directed to An Abstract Idea
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`50.
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`The Summary of the Invention states that “The present invention relates to a
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`method of restricting software operation within a license limitation.” ’941 patent at 1:38-39.
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`This describes the abstract idea of controlling software access. The rest of the specification
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`explains that the method is based on data stored in a particular location. In fact, the next line of
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`the specification states, “This method strongly relies on the use of a key and of a record, which
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`have been written into the non-volatile memory of a computer.” Id. at 1:39-42. Based on my
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`review of the ’941 patent, this first paragraph of the Summary of the Invention describes the
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`claimed abstract idea. In my opinion, the claims are directed to the abstract idea of controlling
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`software access based on data stored in a particular location.
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`51.
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`The claims of the ’941 patent primarily refer to generic computer technology. In
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`particular, independent Claims 1 and 18 recite four steps: (1) choosing a program, (2) creating a
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`way to verify a user’s access to that program, (3) verifying the user’s access, and (4) allowing or
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`denying access. The specification at column 1, lines 19-32 explains that at least steps (1), (3), and
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`(4) were not new. Specifically, the Background of the Invention sections states, “Software based
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`products have been developed to validate authorized software usage by writing a license signature
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`onto a computer’s volatile memory (e.g. hard disk).” Id. at 1:19-21. That explanation is generally
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`consistent with my understanding of the state of the art for restricting software operation within a
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`license in 1998 when the inventors filed for the patent. However, I do not believe that most
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`people of ordinary skill in the art would refer to a hard disk as volatile memory. In my
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`experience, a hard disk is almost universally recognized as non-volatile memory because it is used
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`for persistent storage of data when the computer is turned off. Generally, though, the existing
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`software products were able to perform the claimed steps of (1) choosing a program, (2) creating a
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`way to verify a user’s access to that program, (3) verifying the user’s access, and (4) allowing or
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`denying access. None of those steps were an improvement by themselves. However, the
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`specification describes some advantages to perform the step “creating a way to verify a user’s
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`access to that program” base on locating data in specific location.
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`52.
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`The patent states, “It is important to note that the key is stored in a non-volatile
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`portion of the BIOS, i.e. it cannot be removed or modified.” Id. at 1:50-52. However, this was
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`also conventional in computers as explained a few lines before (“Thus, consider a conventional
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`computer ha