UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioner,
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`v.
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`ANCORA TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2020-01184
`U.S. Patent No. 6,411,941
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`PATENT OWNER PRELIMINARY RESPONSE
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`3275837.v1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioner,
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`v.
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`ANCORA TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2020-01184
`U.S. Patent No. 6,411,941
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`PATENT OWNER PRELIMINARY RESPONSE
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`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
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`Table of Contents
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`INTRODUCTION
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`IDENTIFY THE CLAIM TERMS AND CLAIM CONSTRUCTIONS THAT
`PETITIONER KNOWS TO BE ESSENTIAL TO THE BOARD’S
`DETERMINATIONS
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`1
`I.
`5
`II. U.S. PATENT NO. 6,411,941
`5
`A. Background
`8
`B. Challenged Independent Claim
`III. REFERENCES RELIED UPON IN THE PETITION AND PROPOSED
`9
`9
`A. References
`10
`B. Proposed Grounds
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`10
`A. Before the district court in parallel litigation, Petitioner argued that the
`11
`B. Petitioner advances invalidity arguments that reflect an inconsistent
`11
`C. Petitioner’s failure to brief this Board on proper claim construction justifies
`15
`V. THE BOARD SHOULD DENY INSTITUTION BASED ON GROUND 1 17
`A. The Board should exercise its discretion to deny institution under 35 U.S.C.
`18
`18
`1. The same art previously was presented to the Office
`2. The Petitioner has not demonstrated that the Office erred in its analysis of
`20
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`GROUNDS FOR INSTITUTION
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`phrase “memory of the BIOS” requires more than a “mere association”
`between the “memory” and the “BIOS”
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`construction of the phrase “memory of the BIOS”—namely, that the phrase
`requires no more than a “mere association” between the “memory” and the
`“BIOS”
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`denial of the Petition.
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`§ 325(d)
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`previously considered art
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`view of Yee renders Claims 1, 2, and 6–17 unpatentable.
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`§ 325(d)
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`based Grounds because the art and arguments are the same or
`substantially the same as art and arguments previously presented to and
`considered by the Office.
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`over the art to which Hasebe and Shipman are merely cumulative
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`of Shipman renders Claims 1–3, 6–15, and 17 unpatentable.
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`B. Petitioner has not demonstrated a reasonable likelihood that Schwartz in
`22
`VI. THE BOARD SHOULD DENY INSTITUTION BASED ON GROUND 2 26
`A. The Board should exercise its discretion to deny institution under 35 U.S.C.
`26
`1. The Board should deny institution on Petitioner’s Hasebe and Hasebe-
`26
`2. Petitioner has not shown error in the Examiner’s reasons for allowance
`31
`B. Petitioner has not demonstrated a reasonable likelihood that Hasebe in view
`33
`VII. THE PETITION SHOULD BE DENIED UNDER THE FINTIV FACTORS
`35
`1. Factor 1: A stay is unlikely even if IPR were instituted
`36
`2. Factor 2: The scheduled trial date precedes the Board’s projected statutory
`37
`3. Factor 3: The district court and the parties have invested substantially in
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`4. Factor 4: There is substantial overlap between issues raised in Samsung’s
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`5. Factor 5: The parties are the same in both proceedings
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`44
`6. Factor 6: The merits of the Petition weigh against institution
`VIII. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER’S
`45
`IX. CONCLUSION
`48
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`AND 35 U.S.C. § 314(a)
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`deadline for a final written decision
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`the district court litigation
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`Petition and in the district court litigation
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`ARGUMENTS ARE CONCLUSORY AND ATTEMPT TO IMPERMISSIBLY
`INCORPORATE EXPERT TESTIMONY BY REFERENCE
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`Table of Authorities
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`Cases
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`Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir.
`2001)
`Ancora Technologies, Inc. v. Samsung Electronics Co., Ltd. and Samsung
`2
`Electronics America, Inc., Case No. 1:20-cv-00034-ADA (W.D. TX.)
`Ancora Techs., Inc. v. Apple Inc., 2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) 6
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014)
`5, 14, 16
`Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018)
`6, 7, 8
`Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`passim
`Avid Tech., 815 F.3d at 1363
`49
`Conopco, Inc. v. Proctor & Gamble Co., IPR2013-00510
`51
`Fintiv, IPR2020-00019
`47
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`48
`In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015)
`22
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
`48
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`48
`MV3 Partners
`39
`Next Caller, Inc. v. TRUSTID, Inc., IPR2019-00961, Paper 10 at 16 (PTAB Oct.
`45
`16, 2019)
`38
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.
`41
`Optis Wireless Technology, LLC et al v. Apple Inc., Case No. 2:19-CV-00066
`17
`Orthopediatrics Corp. v. K2M, Inc., Case IPR2018-01548
`Samsung Electronics America, Inc., Case No. 1:20-cv-00034-ADA (W.D. TX.) 23
`Sand Revolution II, LLC v. Continental Intermodal Group - Trucking LLC,
`IPR2019-01393 (June 16, 2020)
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`Statutes
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`17
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`42
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`35 U.S.C. § 101
`35 U.S.C. § 103
`35 U.S.C. § 312(a)(3)
`35 U.S.C. § 313
`35 U.S.C. § 314(a)
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`iv
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`6
`28
`45
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`35, 47, 52
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`Rules
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`35 U.S.C. § 325(d)
`35 U.S.C. §325(d)
`37 C.F.R. § 42.104(b)(3)
`37 C.F.R. § 42.107
`37 C.F.R. § 42.24
`37 C.F.R. § 42.24(a)(i)
`37 C.F.R. § 42.24(b)(1)
`37 C.F.R. §§ 42.104(b)(3)
`42.104(b)(4)
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`Case IPR2020-01184
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`17, 22, 26, 33
`18, 20
`16, 17
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`46, 48
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`2, 15
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`U.S. Patent No. 6,411,941
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`I.
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`INTRODUCTION
`In accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner
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`Ancora Technologies, Inc. (“Patent Owner” or “Ancora”) respectfully submits this
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`Preliminary Response to the Petition for inter partes review (the “Petition”) filed
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`by Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`(collectively “Petitioner” or “Samsung”) challenging Claims 1–3 and 6–17 (“the
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`Challenged Claims”) of U.S. Patent No. 6,411,941 (the “’941 Patent”).
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`The Petition should be denied for any of three reasons: First, it should be
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`denied because the Petitioner failed to advance any claim construction argument
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`even though Petitioner’s argument depends on the Board construing the claimed
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`“non-volatile memory of the BIOS” term so broadly that it encompasses any
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`“memory space associated with the computer’s basic input/output system (BIOS).”
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`No support exists for such a construction, which would effectively read out the key
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`feature of the ’941 Patent by construing “memory of the BIOS” to include non-
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`BIOS memories. Pet. at 11, n. 4 (emphasis added). In fact, that construction is
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`wholly inconsistent with Petitioner’s position in the parallel Western District of
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`Texas (“WDTX”) litigation where Petitioner argued that “memory of the BIOS”
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`must be narrowly construed as a memory that: (i) “stores the BIOS;” (ii) “is not
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`recognized by an operating system as a storage device;” and (iii) “does not have a
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`file system.” (Defendants’ “Responsive Claim Construction Brief,” filed
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`04/10/2020 in Ancora Technologies, Inc. v. Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc., Case No. 1:20-cv-00034-ADA (W.D. TX.),
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`(DI 49) (Ex. 2014, p11-12).
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`Petitioner cannot escape the obvious inconsistency between its two
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`constructions merely by failing to expressly propose a construction of the term in
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`its Petition. Petitioner should have expressly identified the claim terms necessary
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`for its argument, stated “[h]ow the challenged claim[s] [are] to be construed,” and
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`included in its Petition an explanation of “[h]ow the construed claim[s] [are]
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`unpatentable” in light of that construction. 37 C.F.R. §§ 42.104(b)(3),
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`42.104(b)(4). Petitioner’s failure to do so necessarily means that Petitioner has
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`failed to satisfy 37 C.F.R. §§ 42.104(b)(3), 42.104(b)(4), and the Board thus does
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`not even need to consider the merits of the Petition.
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`Second, the Petition should be denied because it is based on art that either
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`already has been reviewed and rejected or is merely cumulative of art that has
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`already been reviewed and found not to disclose or even contemplate the key
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`characteristic of the ’941 Patent: its enabling licensed programs running at the
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`computer’s Operating System (OS) level to interact with the computer’s basic
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`input/output system (BIOS) and use it to store a software verification structure in
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`the erasable non-volatile memory area of the BIOS normally used by the computer
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`during startup operations.
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`Specifically, during prosecution of the ’941 Patent at the U.S. Patent and
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`Trademark Office (the “USPTO” or “Office”), the Examiner emphasized that he
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`was allowing the ’941 Patent over the prior art precisely because “the closest prior
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`art systems, singly or collectively, do not teach licensed programs running at the
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`OS level” interacting with BIOS and that, to the contrary, “it is well known to
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`those of ordinary skill of the art that a computer BIOS is not setup to manage a
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`software license verification structure.” (Ex. 1004 (Reasons for Allowance) at
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`213). The Examiner explained that “the present [’941] invention overcomes this
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`difficulty by using an agent to setup a verification structure in the erasable non-
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`volatile memory of the BIOS.” (Ex. 1004 (Reasons for Allowance) at 213).
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`None of the cited art contemplates or even suggests this key innovation—a
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`reality demonstrated by the fact that references relied upon in the Petition have
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`been either previously reviewed by the USPTO or are cumulative of references
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`reviewed by the USPTO. For example, the validity of the `941 Patent was
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`confirmed in view of “Schwartz” (Ex. 1005) in Ex Parte Reexamination (Ex.
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`1018). Further, as explained in greater detail below, “Yee” (Ex. 1006), “Hasebe”
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`(Ex. 1007), and “Shipman” (Ex. 1008) are merely cumulative of references that
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`have been reviewed and found not to anticipate or render obvious the ’941 Patent,
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`namely Schwartz, U.S. 6,189,146 (“Misra”) (Ex. 1034), and U.S. 5,479,639
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`(“Ewertz”) (Ex. 1035).
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`Given the Office’s prior conclusions, it thus is not surprising that the Petition
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`depends on Petitioner’s unsupported attempt to construe the key “non-volatile
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`memory of the BIOS” term in a manner so inconsistent with its plain and ordinary
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`meaning—and Petitioner’s own prior constructions.
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`Third, the Petition also should be denied because institution of a trial at the
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`PTAB would be an inefficient use of Board resources in light of the “advanced
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`state” of the parallel district court litigation in WDTX in which Petitioner has
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`raised the same invalidity challenges and where a verdict will be reached in April
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`2021. Indeed, each of the Fintiv factors weighs in favor of denial:
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`(1) a stay is unlikely even if IPR were instituted;
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`(2) the scheduled trial date precedes the Board’s projected statutory deadline
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`for a final written decision;
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`(3) the district court and the parties have invested substantially in the district
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`court litigation;
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`(4) there is substantial overlap between issues raised in the Petition and in
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`the district court litigation;
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`(5) the parties are the same in both proceedings; and
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`(6) the merits of the Petition weigh against institution.
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`Given all of these shortcomings, this Preliminary Response focuses on those
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`claim elements that most easily and simply demonstrate that Petitioner has failed to
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`establish a basis for Institution. Patent Owner does not address at this time the
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`numerous other incorrect arguments that Petitioner makes for Institution because
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`the below elements alone demonstrate that Petitioner fails to establish a reasonable
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`likelihood that any of the Challenged Claims of the ’941 Patent is unpatentable.
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`For any of these reasons, the Petition should be denied.
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`II. U.S. PATENT NO. 6,411,941
`A. Background
`Since it was issued, the ’941 Patent has been reviewed repeatedly. Its claims
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`have been construed by the USPTO in Ex Parte Reexamination (Ex. 1018) and by
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`multiple courts, including the Federal Circuit in Ancora Techs., Inc. v. Apple, Inc.,
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`744 F.3d 732 (Fed. Cir. 2014) (“Apple II”). See also Ancora Techs., Inc. v. Apple
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`Inc., 2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) (“Apple I”). All recognized that,
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`prior to the ’941 Patent, it simply was not contemplated that OS level programs
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`could interact with the BIOS at all—much less “us[e] an agent to setup a
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`verification structure in the erasable non-volatile memory area of the BIOS” as all
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`challenged claims require.1 (Ex. 1004 (Reasons for Allowance) at 213 (emphasis
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`added)); accord Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir.
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`1 The BIOS “is the set of essential startup operations that run when a computer is
`turned on, which tests hardware, starts the operating system, and supports the
`transfer of data among hardware devices.” Apple I, 2012 WL 6738761, at *7.
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`2018) (“HTC”), 908 F.3d at 1348-49 (stating that “[t]he claimed method here
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`specifically identifies how that functionality improvement is effectuated in an
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`assertedly unexpected way: a structure containing a license record is stored in a
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`particular, modifiable, non-volatile portion of the computer’s BIOS, and the
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`structure in that memory location is used for verification”).
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`Given this recognition, it thus should not be surprising that the ’941 Patent’s
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`validity has been confirmed repeatedly, including most recently by the Federal
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`Circuit in Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018)
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`(“HTC”), which held that the asserted claims satisfied 35 U.S.C. § 101 as a matter
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`of law. As the Federal Circuit recognized in its HTC decision, the ’941 Patent is
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`directed to “a specific technique that departs from earlier approaches to solve . . . a
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`technological problem with computers: vulnerability of license-authorization
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`software to hacking.” HTC, 908 F.3d at 1348-49.
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`Specifically, before the ’941 Patent, there were two basic (and sub-optimal)
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`methods of verifying and restricting the operation of a program. One involved
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`“software-based methods” that “require writing a license signature on the
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`computer’s hard drive.” HTC, 908 F.3d at 1344. A key “flaw in those methods,”
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`however, “is that such a signature can be changed by hackers without damaging
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`other aspects of computer functionality.” Id. (citing ’941 Patent at 1:19-26).
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`Hardware-based methods also existed, but “require[d] inserting a dongle into a
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`computer port to authenticate the software authorization.” Id. (citing ’941 Patent at
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`1:27-32). As a result, those “methods are costly, inconvenient, and not suitable for
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`software sold and downloaded over the internet.” Id.
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`Petitioner asserts that “storing sensitive information in BIOS memory to
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`enhance security” was allegedly “well-known.” Pet. at 6. Such assertion not only is
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`entirely conclusory, but fails to capture the true core innovation of the ’941 Patent
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`recognized by both the Federal Circuit and the Examiner. Specifically, the
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`“innovation of the patent relates to where the license record is stored in the
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`computer and the interaction of that memory with other memory to check for
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`permission to run a program that is introduced into the computer.” HTC, 908 F.3d
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`at 1345. “More specifically: The method calls for storage of a license record in a
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`‘verification structure’ created in a portion of BIOS memory that, unlike the ROM
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`of the BIOS, ‘may be erased or modified’—for example, an Electrically Erasable
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`Programmable Read Only Memory (E2PROM), which may be altered by ‘using
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`E2PROM manipulation commands.’” Id. (internal citations omitted). Thus, in an
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`embodiment, “[w]hen a program has been loaded into the computer’s volatile
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`memory (e.g., Random Access Memory), the computer, in order to verify
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`authorization to run that program, ‘accesses the program under question, retrieves
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`therefrom the license record, encrypts the record utilizing the specified unique key
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`... and compares the so encrypted record’ to the one stored in the verification
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`structure in the (erasable, modifiable) BIOS.” Id. (same). “If the newly encrypted
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`record does not match the one in the BIOS, the program is halted or other action is
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`taken.” Id. (same).
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`In short, the’941 Patent improved over prior art techniques by using the
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`BIOS memory in an unexpected manner that, as the Federal Circuit explained,
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`“improves computer security, . . . because successfully hacking BIOS memory
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`(i.e., altering it without rendering the computer inoperable) is much harder than
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`hacking the memory used by the prior art to store license-verification information.”
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`HTC, 908 F.3d at 1345.
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`B. Challenged Independent Claim
`The challenged independent claim is Claim 1, which reads:
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`A method of restricting software operation within a license for
`1.
`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,
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`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
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`acting on the program according to the verification.
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`Patent Owner has added emphasis to the two claim terms that are central to
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`Petitioner’s arguments and which are a focus of this Preliminary Patent Owner’s
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`Response: “non-volatile memory area of a BIOS” and “non-volatile memory of the
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`BIOS.”
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`III. REFERENCES RELIED UPON IN THE PETITION AND
`PROPOSED GROUNDS FOR INSTITUTION
`A. References
`The Petition relies on four references in support of its two proposed grounds
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`for Institution:
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`• U.S. 6,153,835 (“Schwartz”) (Ex. 1005)
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`• Ph.D. Thesis of Bennett Yee, “Using Secure Coprocessors”, Carnegie-
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`Mellon University, CMU-CS-94-149 (“Yee”) (Ex. 1006)
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`• U.S. 5,935,243 (“Hasebe”) (Ex. 1007)
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`• U.S. 5,852,736 (“Shipman”) (Ex. 1008)
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`Schwartz previously has been considered by this Office in Ex Parte
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`Reexamination No. 90/010,560, filed against the ’941 Patent by Microsoft Corp.
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`on May 28, 2009, and found to be immaterial to patentability:
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`Schwartz is therefore merely cumulative to the art cited by the
`Examiner during prosecution, insofar as it teaches to the claim
`limitations. It is NOT agreed that a reasonable examiner would have
`found this reference important in determining the patentability of
`claims 1-19.” (Ex. 1018, 165).
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`Although Yee, Hasebe and Shipman have not previously been before this
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`Office, Petitioner’s analysis does not rely on Yee as demonstrating or rendering
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`obvious the key “erasable, non-volatile memory area of a BIOS”2 term, and Hasebe
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`and Shipman are cumulative of references reviewed by the Examiner during
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`prosecution and found to be irrelevant with regard to patentability of the ’941
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`Patent.
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`B.
`Proposed Grounds
`The proposed grounds are summarized in the table below:
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`Ground
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`’941 Patent
`Claims
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`Primary
`Reference
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`Secondary
`Reference(s)
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`Type of Challenge
`AIA 35 U.S.C. §
`103 and pre-AIA 35
`U.S.C. § 103(a)
`AIA 35 U.S.C. §
`103 and pre-AIA 35
`U.S.C. § 103(a)
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT FAILS TO
`IDENTIFY THE CLAIM TERMS AND CLAIM CONSTRUCTIONS THAT
`PETITIONER KNOWS TO BE ESSENTIAL TO THE BOARD’S
`DETERMINATIONS
`The Petition should be denied because Petitioner’s arguments depend on a
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`1
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`2
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`1, 2, and 6–17
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`Schwartz
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`Yee
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`1–3, 6–15, and
`173
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`Hasebe
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`Shipman
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`specific (and broad) construction of the term “memory of the BIOS” that Petitioner
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`2 Petitioner relies only on Schwartz to satisfy the Claim element ‘erasable, non-
`volatile memory area of a BIOS.’ (Pet. at 10 and 11).
`3 In the Table of Contents section of the Petition, Petitioner erroneously lists in a
`heading Claims 1-3 and 11-13 with regard to Ground 2 (See Pet. at ii (B.) and 31)
`which is inconsistent and does not capture Petitioner’s additional proposed Ground
`2 rejections with regard to Claims 6-10 (See Pet. at ii (B. 4.-B.8.) and 50-55).
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`fails to articulate in its Petition and which conflicts with the construction the
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`Petitioner advanced in parallel district court litigation.
`
`A. Before the district court in parallel litigation, Petitioner argued
`that the phrase “memory of the BIOS” requires more than a “mere
`association” between the “memory” and the “BIOS”
`Before the district court, Petitioner argued that the phrase “non-volatile
`
`memory of the BIOS” should be construed as a memory that: (i) “stores the
`
`BIOS;” (ii) “is not recognized by an operating system as a storage device;” and
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`(iii) “does not have a file system.” (Ex. 2014, p11-12). (Patent Owner, in contrast,
`
`argued that no construction was necessary because the court had separately
`
`construed the terms “BIOS” and “non-volatile memory.”) In advocating for a
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`specific construction, Petitioner argued that the phrase “memory of the BIOS”
`
`must be construed to convey more than a “mere association” between the
`
`“memory” and the “BIOS” because “BIOS memory is ‘used for storing programs
`
`that assist in the start-up of a computer,’ i.e., the BIOS software, and not any other
`
`memory that is merely associated with the BIOS software… [b]ecause one could
`
`argue that every memory in a computer can somehow be ‘associated with’ the
`
`BIOS software in some way.” (Ex. 2014, p13 (emphasis added)).
`
`B.
`Petitioner advances invalidity arguments that reflect an
`inconsistent construction of the phrase “memory of the BIOS”—
`namely, that the phrase requires no more than a “mere association”
`between the “memory” and the “BIOS”
`Before this Board, Petitioner makes a complete about face. Its invalidity
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`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`arguments require that the Board reject Petitioner’s district court claim
`
`construction arguments and construe the phrase “memory of the BIOS” to
`
`encompass any memory having a “mere association” with the BIOS. This
`
`construction is necessary for Petitioner to prevail before the Board because the
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`prior art elements that Petitioner alleges to be “memory of the BIOS” have no
`
`relationship with the BIOS other than:
`
`• for Ground 1, BIOS is simply one of several distinct logical
`structures mutually stored in one physical memory element
`(pointing to EEPROM 250a, Schwartz);
`• for Ground 2, BIOS simply supports the transfer of data to the
`element (pointing to GPNV data storage 140, Shipman), as it
`does to many other elements4.
`
`Rather than acknowledging and advocating for a new (albeit inconsistent)
`
`claim construction before this Board, Petitioner side-steps the issue and instead
`
`states in a footnote that the cited art satisfies the claim limitation under what
`
`Petitioner purports (incorrectly) to be Patent Owner’s claim construction, stating:
`
`Patent Owner has asserted that “non-volatile memory of the BIOS” is
`“memory space associated with the computer’s basic input/output
`system (BIOS).” (Ex-1009, p. 12.) EEPROM 250a is the claimed
`memory under that interpretation because it stores part of BIOS module
`309. (Ex-1005, 8:17-19).
`
`
`4 BIOS is construed as (emphasis added): An acronym for Basic Input / Output
`System. It is the set of essential startup operations that begin to run automatically
`when a computer is turned on, which test hardware, starts the operating system,
`and support the transfer of data among hardware devices. (Ex-1011, 2).
`
`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
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`(Pet. at 11, n. 4).
`
`As a preliminary matter, Petitioner has misrepresented Patent Owner’s claim
`
`construction arguments in the district court. Patent Owner never argued that the
`
`phrase “memory of a BIOS” required construction. Only Petitioner did. Further,
`
`Patent Owner never advocated for the broad construction Petitioner now pretends.
`
`In response to Petitioner’s argument that the “non-volatile memory of the BIOS”
`
`used to store the “verification structure” must be the same memory used to “store[]
`
`the BIOS,” Patent Owner simply stated that, “consistent with the plain meaning of
`
`the word ‘of,’ the Federal Circuit has described the ‘non- volatile memory of
`
`[a/the] BIOS’ as ‘memory space associated with the computer’s basic input/output
`
`system (BIOS), rather than other memory space.’” (Ex. 1009, 12) (emphasis
`
`added) (quoting Apple II, 744 F.3d at 733 (pointing to various disclosures in the
`
`’941 Patent)).
`
`In short, as the above demonstrates, Patent Owner has consistently
`
`maintained that “memory of the BIOS” is consistent with the plain and ordinary
`
`meaning of the term. Indeed, during the described Ex Parte Reexamination, the
`
`Examiner likewise rejected the broad construction of “memory of the BIOS” on
`
`which Petitioner’s arguments now depend, stating:
`
`The fact that a program or table resides in non-volatile memory does
`not necessarily mean that it is part of the BIOS. It is therefore the case
`
`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`that a reasonable examiner would only consider a table to be in BIOS
`if it were, at a minimum, created by a function residing in the BIOS.
`
`Ex. 1018, 164. Patent Owner’s understanding is no different. Patent Owner
`
`certainly never argued that “memory of the BIOS” includes any memory as
`
`Petitioner’s misleading, selective quotation suggests.
`
`More significantly, it is the Petitioner’s duty to present this Board with what
`
`Petitioner believes to be correct claim constructions of important claim terms.
`
`Petitioner has failed to do this. Petitioner clearly disagrees with the claim
`
`construction that it buries in footnote 4, and suggests at Pet. 35. It expressly and
`
`vociferously argued against this construction in district court (“memory associated
`
`with BIOS”). Further, Petitioner knows that the construction of this claim term is
`
`an important one because footnote 4 admits that Petitioner’s claim mapping is
`
`satisfied “under [that] interpretation.”
`
`Similarly, Petitioner’s failure to provide necessary claim construction
`
`likewise dooms its Ground 2 argument. Specifically, just as with Ground 1,
`
`Petitioner’s Ground 2 invalidity arguments require that the Board reject
`
`Petitioner’s claim construction arguments to the district court and construe the
`
`phrase “memory of the BIOS” to require no more than a “mere association”
`
`between the memory and the BIOS in order for the GPNV data storage 140 to be
`
`considered “memory of the BIOS.”:
`
`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`The Court declined to construe “memory of the BIOS,” but BIOS
`memory 130 and GPNV data storage 140 together are a memory area
`of the BIOS under the term’s plain and ordinary meaning. (Ex-1002, ¶
`251-252.) Citing to the Federal Circuit’s opinion in Apple II, Patent
`Owner argued that this memory needs only to be a “memory space
`associated with the computer’s basic input/output system (BIOS),
`rather than other memory space.” (Ex-1009, 12 (emphasis in original).)
`Both the BIOS memory 130 and GPNV data storage 140 are associated
`with the computer’s BIOS.
`
`(Pet. at 35 (emphasis is original)). Again, Petitioner provides no justification for
`
`such a construction, which is flatly inconsistent both with its arguments to the
`
`district court and the plain meaning of the term.
`
`C.
`Petitioner’s failure to brief this Board on proper claim
`construction justifies denial of the Petition.
`Petitioner has ignored the Board’s rules requiring identification of claim
`
`construction positions and an explanation of how Institution is warranted in light of
`
`those constructions. See 37 C.F.R. §§ 42.104(b)(3), 42.104(b)(4). In addition to
`
`ensuring that the Board is provided with appropriate claim construction arguments
`
`necessary for its determinations, these rules aim to curtail precisely the kind of
`
`“nose of wax”5 gamesmanship in which Petitioner has attempted to engage here:
`
`Before the district court, Petitioner advocated for one claim construction; before
`
`this Board, Petitioner bases its invalidity arguments on the opposite construction,
`
`
`5 Patents “may not, like a nose of wax, be twisted” in two opposite directions—one
`to support an argument of non-infringement, and another to avoid invalidity.
`Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir.
`2001) (citations and internal quotation marks omitted)
`
`3275837.v1
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`which it falsely attributes to Patent Owner, and in any event disagrees with—all
`
`without explanation.
`
`Denial of the Petition is warranted on this ground alone. In Orthopediatrics
`
`Corp. v. K2M, Inc., Case IPR2018-01548, Paper 9 at 10-11 (PTAB, Mar 1, 2019),
`
`this Board denied institution where Petitioner relied upon claim constructions
`
`urged by Patent Owner in related district court litigation but where Petitioner
`
`advocated for a different claim construction in that same district court litigation.
`
`There, the Board held that denial of institution was proper where the Petitioner
`
`“fail[ed] to identify how the challenged claims are to be construed and applied to
`
`the prior art.” Id. at 10. The same is true here, where Petitioner has neither stated
`
`its construction of the term “memory of the BIOS” nor explained how that
`
`construction is to be applied to the Board’s analysis of the proffered prior art.
`
`Compounding this flaw is Petitioner’s additional failure to disclose that it
`
`has “take[n] conflicting positions between this proceeding and the related district
`
`court litigation.” Id. This likewise is reason enough to deny the Petition. As the
`
`Board also explained in Orthopediatrics, in those “unique circumstances … where
`
`Petitioner advocated for a different claim construction in the related district court
`
`litigation, … construction of the claim terms in dispute is necessary;” a Petitioner’s
`
`failure to provide “such claim construction” necessarily means that “the Petition
`
`fails to comply with 37 C.F.R. § 42.104(b)(3).” Id. at 11.
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`3275837.v1
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`Furthermore, Petitioner’s purported agreement to accept the district court
`
`claim construction is meaningless because the district court never adopted the
`
`construction Petitioner now implicitly contends. Instead, the district court agreed
`
`with Patent Owner that no separate construction was necessary for the phrase
`
`“non-volatile memory of the BIOS” because both “non-volatile memory” and
`
`“BIOS” already had been construed.
`
`Accordingly, the Petition here suffers the same two flaws that required
`
`denial of institution in Orthopediatrics. Even though Petitioner’s arguments
`
`depend on the meaning of “memory of the BIOS,” Petitioner has not provided an
`
`express construction or any support for such a construction as required by Board
`
`rules. Petitioner thus “fails to identify how the challenged claims are to be
`
`construed and applied to the prior art.” Orthopediatrics, Paper 9 at 10. Further,
`
`Petitioner clearly has “take[n] conflicting positions between this proceeding and
`
`the related district court litigation.” Id. As such, for these reasons alone, “the
`
`Petition fails to comply with 37 C.F.R. § 42.104(b)(3),” and the institution should
`
`be denied. Id. at 11.
`
`V. THE BOARD SHOULD DENY INSTITUTION BASED ON
`GROUND 1
`Ground 1 can and should be denied for either of two reasons: First, the
`
`Board should exercise discretion to deny institution under 35 U.S.C. § 325(d)
`
`3275837.v1
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