UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co., Ltd., and
`Shenzhen TCL Creative Cloud Technology Co., Ltd.,
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`Petitioners,
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`v.
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`Ancora Technologies, Inc.,
`Patent Owner.
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`PTAB Case No. IPR2020-01609
`Patent No. 6,411,941 B1
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,411,941
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`134092-0004.8901/149500475.1
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`

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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 3
`A.
`Real party-in-interest ............................................................................ 3
`B.
`Related matters ..................................................................................... 3
`C.
`Counsel and Service Information ......................................................... 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 4
`A. Ground for Standing ............................................................................. 4
`B. Overview of Challenge and Relief Requested ..................................... 5
`1.
`Identification of Prior Art .......................................................... 5
`2.
`Grounds for Challenge ............................................................... 5
`3.
`Statutory Grounds of Challenge and Legal Principles .............. 6
`The Board Should Exercise Its Discretion to Institute Review ........... 6
`C.
`IV. DESCRIPTION OF TECHNOLOGY ............................................................ 9
`A. Overview of the Technology ................................................................ 9
`B. Overview of the ’941 Patent ............................................................... 11
`1.
`The Specification and Alleged Invention ................................ 11
`2.
`Prosecution History and Later Proceedings ............................. 16
`3.
`The Challenged Claims ............................................................ 20
`CLAIM CONSTRUCTION ......................................................................... 20
`V.
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 21
`VII. SPECIFIC GROUNDS FOR PETITION ..................................................... 21
`A. Ground I: Claims 1–2, 11, and 13 were obvious over the
`combined teachings of Hellman and Chou ........................................ 21
`1.
`Overview of Hellman ............................................................... 21
`2.
`Overview of Chou .................................................................... 27
`3. Motivations to Combine Hellman and Chou ........................... 28
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`TABLE OF CONTENTS
`(continued)
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`Page
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`4.
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`5.
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`6.
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`Claim 1 preamble: “A method of restricting software
`operation within a license for use with a computer
`including an erasable, non-volatile memory area of a
`BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:” ............................................ 33
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 35
`Claim 1.b: “using an agent to set up a verification
`structure in the erasable, non-volatile memory of the
`BIOS, the verification structure accommodating data that
`includes at least one license record,” ....................................... 37
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 38
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 39
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 40
`10. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 40
`11. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 40
`B. Ground II: Claims 1–3, 6–14, and 16 were obvious over the
`combined teachings of Hellman, Chou, and Schneck ........................ 41
`1.
`Overview of Schneck ............................................................... 41
`2. Motivations to Combine Hellman, Chou, and Schneck .......... 42
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`7.
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`8.
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`9.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Claim 1. preamble: “A method of restricting software
`operation within a license for use with a computer
`including an erasable, non-volatile memory area of a
`BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:” ............................................ 46
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 46
`Claim 1.b: “using an agent to set up a verification
`structure in the erasable, non-volatile memory of the
`BIOS, the verification structure accommodating data that
`includes at least one license record,” ....................................... 47
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 49
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 50
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 50
`Claim 3 preamble: “A method according to claim 2,
`wherein setting up a verification structure further
`comprising the steps of:” ......................................................... 50
`10. Claim 3.a: “establishing, between the computer and the
`bureau, a two-way data-communications linkage;” ................. 51
`11. Claim 3.b: “transferring, from the computer to the
`bureau, a request-for-license including an identification
`of the computer and the license-record’s contents from
`the selected program;” ............................................................. 52
`12. Claim 3.c: “forming an encrypted license-record at the
`bureau by encrypting parts of the request-for-license
`using part of the identification as an encryption key;” ............ 55
`13. Claim 3.d: “transferring, from the bureau to the
`computer, the encrypted license-record; and” ......................... 55
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`TABLE OF CONTENTS
`(continued)
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`Page
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`14. Claim 3.e: “storing the encrypted license record in the
`erasable non-volatile memory area of the BIOS.” ................... 55
`15. Claim 6: “A method according to claim 1 wherein
`selecting a program includes the steps of: establishing a
`licensed-software-program in the volatile memory of the
`computer wherein said licensed-software-program
`includes contents used to form the license-record.” ................ 56
`16. Claim 7 preamble: “A method according to claim 6
`wherein using an agent to set up the verification structure
`includes the steps of:” .............................................................. 56
`17. Claim 7.a: “establishing or certifying the existence of a
`pseudo-unique key in a first non-volatile memory area of
`the computer; and” ................................................................... 57
`18. Claim 7.b: “establishing at least one license-record
`location in the first nonvolatile memory area or in the
`erasable, non-volatile memory area of the BIOS.” .................. 57
`19. Claim 8 preamble: “A method according to claim 6
`wherein establishing a license-record includes the steps
`of:” ............................................................................................ 58
`20. Claim 8.a: “forming a license-record by encrypting of
`the contents used to form a license-record with other
`predetermined data contents, using the key; and” ................... 58
`21. Claim 8.b: “establishing the encrypted license-record in
`one of the at least one established license-record
`locations.” ................................................................................ 58
`22. Claim 9 preamble: “A method according to claim 7
`wherein verifying the program includes the steps of:” ............ 59
`23. Claim 9.a: “encrypting the licensed-software-program's
`license-record contents from the volatile memory area or
`decrypting the license-record in the erasable, non-volatile
`memory area of the BIOS, using the pseudo-unique key;
`and” .......................................................................................... 59
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`TABLE OF CONTENTS
`(continued)
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`Page
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`24. Claim 9.b: “comparing the encrypted licenses-software-
`program’s license-record contents with the encrypted
`license-record in the erasable, non-volatile memory area
`of the BIOS, or comparing the license-software-
`program's license-record contents with the decrypted
`license-record in erasable non-volatile memory area of
`the BIOS.” ................................................................................ 60
`25. Claim 10: “A method according to claim 9 wherein
`acting on the program includes the step: restricting the
`program's operation with predetermined limitations if the
`comparing yields non-unity or insufficiency.” ........................ 60
`26. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 61
`27. Claim 12: “The method of claim 1, wherein a pseudo-
`unique key is stored in the non-volatile memory of the
`BIOS.” ...................................................................................... 61
`28. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 63
`29. Claim 14: “The method according claim 13, wherein the
`step of using the agent to set up the verification record,
`including the license record, includes encrypting a
`license record data in the program using at least the
`unique key.” ............................................................................. 63
`30. Claim 16: “The method according to claim 13, wherein
`the step of verifying the program includes a decrypting
`the license record data accommodated in the erasable
`second non-volatile memory area of the BIOS using at
`least the unique key.” ............................................................... 63
`VIII. CONCLUSION ............................................................................................. 64
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`EXHIBIT LIST
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
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`Ex. 1001
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`Ex. 1002
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`Image File Wrapper of U.S. Patent No. 6,411,941 (“File History”)
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`Ex. 1003
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`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
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`Ex. 1004
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`U.S. Patent No. 4,658,093 (“Hellman”)
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`Ex. 1005
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`U.S. Patent No. 5,892,906 (“Chou”)
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`U.S. Patent No. 5,933,498 (“Schneck”)
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US), Inc., No.
`8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No. 34).
`
`In re: Coronavirus Public Emergency, Order Concerning Phased
`Reopening of the Court, General Order No. 20-09, United States
`District Court for the Central District of California, Aug. 6, 2020.
`Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns AB, No.
`1:19-cv-01703 (D. Del.).
`
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No. 1:19-cv-
`01712 (D. Del.).
`
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No. 4:11-
`cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107).
`
`Final Claim Constructions of the Court, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020) (ECF No.
`69).
`
`Supplemental Claim Construction Order, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020) (ECF No.
`93).
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`134092-0004.8901/149500475.1
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`Ex. 1014
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`Joint Claim Construction and Prehearing Statement, Ancora Techs.,
`Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192 (C.D. Cal. July 17,
`2020) (ECF No. 49).
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioners request inter
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`partes review (“IPR”) of U.S. Patent No. 6,411,941 (Ex. 1001).
`
`I.
`
`INTRODUCTION
`The ’941 Patent generally relates to methods for restricting unauthorized
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`software operation. Specifically, the ’941 Patent claims such a method by storing a
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`license record in the BIOS memory, which purportedly overcame deficiencies
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`using a software-based prior art method where a license record was stored in
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`“volatile memory (e.g., hard disk)” and a hardware-based prior art method. ’941
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`Patent at 1:10-42. Indeed, storing a license record for a program in the BIOS
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`memory, and not just any non-volatile memory, is the supposed improvement of
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`the ‘941 Patent claims over the prior art in prosecution, an ex parte reexamination,
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`a covered business method review, and two Federal Circuit appeals; even though
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`those proceedings conceded that a “license record” and “BIOS memory” were both
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`conventional. But the storage of license records in a BIOS memory was not a
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`patentable distinction over the prior art as of the priority date in 1998, as
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`Petitioners demonstrate with the use of three prior art references, Hellman, Chou,
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`and Schneck.
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`While the ’941 Patent has been litigated in district court and at the Patent
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`Office in numerous cases, its invalidity based on prior art publications has been
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`considered in only one of these proceedings. Neither of the Federal Circuit appeals
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`
`considered prior art invalidity. One appeal was limited to claim construction
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`issues, and one appeal was limited to patent eligibility. The covered business
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`method review was denied institution on the basis that the ’941 Patent was not
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`eligible for covered business method review. Despite the Patent Owner having
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`asserted the ’941 Patent against 10 entities over the course of more than 10 years,
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`the invalidity of the ’941 Patent’s claims has only been considered on the merits in
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`one instance, an ex parte reexam.
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`Petitioners submit that, when fully considered on the merits, the prior art
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`demonstrates that storing information, a license record or otherwise, in the BIOS
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`memory, that is used in a method to restrict unauthorized operation of software,
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`was well-known as a way to provide increased protection against tampering with
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`that information by, e.g., a software hacker. Petitioners demonstrate through the
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`combinations of Hellman, Chou, and Schneck that a person of ordinary skill in the
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`art at the time of the invention (POSA) would have found all challenged claims
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`obvious.
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`For the reasons described herein, Petitioners request institution of an inter
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`partes review and cancellation of all challenged claims of the ’941 Patent.
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
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`II. MANDATORY NOTICES
`A. Real party-in-interest
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co., Ltd., and
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`Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively, “Petitioners”)
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`are the real parties-in-interest.
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`B. Related matters
`Patent Owner asserts that Petitioners infringe the ’941 Patent in Ancora
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`Technologies, Inc. v. TCT Mobile (US) Inc., No. 8:19-cv-02192 (C.D. Cal.), which
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`is consolidated with the same-captioned case No. 2:20-cv-01252 (C.D. Cal.). The
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`latter case was transferred from Ancora Technologies, Inc. v. TCL Corp., 4:19-cv-
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`00624 (E.D. Tex.), in which the complaint was filed on August 27, 2019.
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`Patent Owner has asserted the ’941 Patent against other parties in the
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`following currently-pending district-court lawsuits: Ancora Technologies, Inc. v.
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`Lenovo Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc. v.
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`Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora Technologies, Inc. v. LG
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`Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.); Ancora Technologies, Inc. v.
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`Samsung Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.); Ancora
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`Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.).
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`Samsung Electronics Co., Ltd. et al. filed a petition for inter partes review
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`against the ’941 Patent on June 25, 2020. IPR2020-01184 (“Samsung IPR
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
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`Petition”). For the reasons set forth below, there is no overlap in grounds or prior
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`art references between this Petition and the Samsung IPR Petition.
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`C. Counsel and Service Information
`Lead counsel: John P. Schnurer (Reg. No. 52,196)
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`Back-up counsel: Yun (Louise) Lu (Reg. No. 72,766), and Kyle R.
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`Canavera (Reg. No. 72,167)
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`These attorneys can be reached by mail at Perkins Coie LLP, 11452 El
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`Camino Real, Suite 300, San Diego, CA 92130, contact numbers of 858-720-5700
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`(phone) and 858-720-5799 (fax).
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`Petitioners consent to electronic service. All services and communications
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`to the attorneys listed above may be sent to: PerkinsServiceTCL-Ancora-
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`IPR@perkinscoie.com. A power of attorney is being filed concurrently.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Ground for Standing
`Petitioners certify that the ’941 Patent is available for IPR and that
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`Petitioners are not barred or estopped from requesting IPR challenging claims of
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`the ’941 Patent on the grounds presented here.
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`
`B. Overview of Challenge and Relief Requested
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioners request
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`cancellation of claims 1–3, 6–14, and 16 of the ’941 Patent under pre-AIA 35
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`U.S.C. § 103.
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`Identification of Prior Art
`1.
`Petitioners rely upon the references listed in the Table of Exhibits, including:
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`U.S. Patent No. 4,658,093 (“Hellman” (Ex. 1004)), issued on April 14, 1987
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`from an application filed on July 11, 1983. Hellman is prior art under pre-AIA 35
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`U.S.C. § 102(b).
`
`U.S. Patent No. 5,892,906 (“Chou” (Ex. 1005)), issued on April 6, 1999
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`from an application filed on July 19, 1996. Chou is prior art under pre-AIA 35
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`U.S.C. § 102(e).
`
`U.S. Patent No. 5,933,498 (“Schneck” (Ex. 1006)), issued on August 3,
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`1999 from an application filed on November 5, 1997 and that claims priority to an
`
`application filed on January 11, 1996. Schneck is prior art under pre-AIA 35
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`U.S.C. § 102(e).
`
`Hellman, Chou, and Scheck were not in front of the Patent Office during the
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`original examination, the ex parte reexamination, or the covered business method
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`review of the ’941 Patent.
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`2. Grounds for Challenge
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
`
`Ground
`
`Basis
`
`Reference(s)
`
`Challenged
`Claims
`1–2, 11, 13
`1–3, 6–14, and 16
`
`1
`2
`
`§ 103
`§ 103
`
`Hellman, Chou
`Hellman, Chou, Schneck
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`This Petition, supported by the declaration of Dr. Andrew Wolfe (“Wolfe
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`Decl.” (Ex. 1003)), demonstrates that there is a reasonable likelihood that
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`Petitioners will prevail with respect to cancellation of at least one challenged
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`claim. See 35 U.S.C. § 314(a).
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`Statutory Grounds of Challenge and Legal Principles
`3.
`This Petition requests cancellation of claims 1–3, 6–14, and 16 of the ’941
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`Patent under pre-AIA 35 U.S.C. § 103.
`
`C. The Board Should Exercise Its Discretion to Institute Review
`Under 35 U.S.C. § 325(d), the Board has discretion to deny institution of
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`inter partes review if “the same or substantially the same prior art or arguments
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`previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses
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`Becton, Dickinson factors (a), (b), and (d) to determine whether the same or
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`substantially the same art or arguments previously were presented to the Office.
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`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6, 10 (PTAB Feb. 13, 2020) (precedential). These Becton, Dickinson
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`factors consider: “(a) the similarities and material differences between the asserted
`
`art and the prior art involved during examination; (b) the cumulative nature of the
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
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`asserted art and the prior art evaluated during examination; . . . (d) the extent of the
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`overlap between the arguments made during examination and the manner in which
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`Petitioner relies on the prior art or Patent Owner distinguishes the prior art.”
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8,
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`17–18 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).
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`None of these factors support a finding that the same or substantially the
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`same prior art or arguments were previously presented to the Office. None of
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`Hellman, Chou, and Schneck were submitted to the office during prosecution, the
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`ex parte reexam, the covered business method review, or the Samsung IPR
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`Petition. Furthermore, the basic invalidity argument presented in this Petition was
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`not presented previously to the Office, i.e., that Hellman discloses storing a license
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`record in EEPROM, and Chou shows that a POSA would have used BIOS memory
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`for that storage, because it would have been one of a limited number of available
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`EEPROM modules and would have reduced the risk of tampering. Therefore, the
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`substance of this Petition does not warrant denial of institution under § 325(d).
`
`The Board considers the General Plastics factors to determine whether to
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`exercise its discretion under § 314(a). General Plastic Indus. Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357, Paper 19, 16 (Sept. 6, 2017) (precedential as to
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`§ II.B.4.i). These factors favor institution. First, this Petition is the first petition by
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`Petitioners (Factors 1, 2, and 5). Second, while the Samsung IPR Petition was
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`134092-0004.8901/149500475.1
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`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`PTAB Case No. IPR2020-01609
`
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`filed prior to the present Petition, Patent Owner has not yet filed a preliminary
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`response and the Board has not issued an institution decision yet (Factor 3).
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`Petitioners discovered the prior art presented in this Petition in preparation of its
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`defense in the parallel district court litigation, which was initiated approximately
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`one year ago, and in which Patent Owner only filed its operative complaint less
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`than five months ago (Factor 4). The Petition only presents a single base prior art
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`reference and two grounds, making it more manageable for the Board to issue a
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`final determination within the statutory time limits (Factor 7).
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`The parallel district court proceedings involving the ’941 Patent supports
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`granting institution. First, no trial date has yet been set in the district court case
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`involving Petitioners. (See Ex. 1007.) The parties are in the middle of claim
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`construction briefing, and the claim construction hearing has not yet been held.
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`Second, due to COVID-19, the Central District of California presently is not
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`permitting jury trials in either criminal or civil cases. (See Ex. 1008.)
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`Furthermore, once jury trials do resume, it is expected that criminal trials will take
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`precedence and thus the trial for the parallel civil case for this Petition will likely
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`be delayed. Third, regardless of the district court case involving Petitioners, the
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`district court cases brought by Patent Owner against the Sony defendants and
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`Lenovo defendants have not moved significantly beyond the complaint and
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`answer. (See Ex. 1009; Ex. 1010.) As such, the issues of the validity of the
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`challenged claims will remain relevant regardless of the timing of the Petitioners’
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`district court case. Fourth, even though the ’941 Patent is expired, Patent Owner is
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`presently asserting it against six unrelated groups of entities (i.e., HTC entities, LG
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`entities, Samsung entities, Lenovo/Motorola entities, Sony entities, and TCL
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`entities). So the determination of the invalidity of the claims of the ’941 Patent
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`would provide significant efficiencies to the courts, and merits use of the Board’s
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`finite resources.
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`IV. DESCRIPTION OF TECHNOLOGY
`A. Overview of the Technology
`By the time of the ’941 Patent’s priority date in 1998, the field of software
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`licensing was well-developed. Wolfe Decl. ¶¶ 31–35. For more than a decade
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`prior, practitioners in the field had widely recognized the new risks to software
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`piracy introduced by the transformations to digital media. Id.
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`Many entities recognized that one such risk was “copy protection” or
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`“secondary distribution.” Id. This referred to the situation where a user received a
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`valid license for a software program, but the user then duplicated the program
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`and/or the license so as to use it in an unauthorized fashion for more uses, on more
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`computers, etc. Id. This problem was of particular interest to practitioners because
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`it required the software owner to provide enough trust to the user to perform at
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`least one authorized use, as opposed to providing no trust or unlimited trust. Id.
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`While many solutions were developed, a common theme was to use some form of
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`encryption to reduce unauthorized secondary distribution of the software program.
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`Id.
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`Similarly, by 1998, the field of computer BIOS was well-developed.
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`Wolfe Decl. ¶¶ 36–42. Nearly all consumer end user devices contained a BIOS
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`program that was used to start up the device at power-on time. Id. Early personal
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`computers tended to store BIOS programs in separate, true ROM (read only
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`memory) memory module, i.e., memory that could not be re-written in the field.
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`Id. By the 1990s, it was more common to store BIOS programs in “ROM” that
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`could actually be rewritten in some form. Id. Early forms of this rewritable ROM
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`often required physically accessing the memory chip with a special device. Id.
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`By the ’941 Patent’s priority date in 1998, electrically-erasable
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`programmable read-only memory (EEPROM) was a popular medium for BIOS
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`memory. Id. EEPROM chips had the benefit of being re-writable by software
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`without the need to remove the chip from the computer. Id. This aspect of
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`EEPROM was considered beneficial because it became common prior to the ’941
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`priority date in 1998 for device manufacturers to provide updates to BIOS while
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`the devices were in the field. Id. EEPROM allowed that functionality. Id.
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`B. Overview of the ’941 Patent
`The ’941 Patent issued from U.S. Patent Application No. 09/164,777, filed
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`on October 1, 1998. It claims priority to Israeli Patent Application 124571, which
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`was filed on May 21, 1998. ’941 Patent, Cover Page. Therefore, the priority date
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`of the ’941 Patent is no earlier than May 21, 1998.
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`The Specification and Alleged Invention
`1.
`The ’941 Patent invention is directed to “restricting an unauthorized
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`software program’s operation.” ’941 Patent at 1:6–8. The ’941 Patent recognizes
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`that it was known in the field to store a “license signature” for a program in a
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`computer’s “volatile memory (e.g. hard disk).”1 Id. at 1:19–21. The ’941 Patent
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`alleges that such techniques were “appropriate for restricting honest software
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`users,” but they were “vulnerable to attack at the hands of skilled system’s
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`programmers (e.g. ‘hackers’).” Id. at 1:21–24.
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`The ’941 Patent proposes to solve this problem based on “the use of a key
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`and of a record, which have been written into the non-volatile memory of a
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`computer.” Id. at 1:38–43. The “key” is stored “during manufacture” in a “ROM
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`
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` 1
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` Despite this contradictory example (i.e., that a hard disk is exemplary of volatile
`memory), the Federal Circuit held that “volatile memory” has its ordinary
`meaning, Ancora Technologies, Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed. Cir.
`2014), such as “memory whose data is not maintained when the power is
`removed,” id. at 737.
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`section” of a “BIOS module,” and it “constitutes, effectively, a unique
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`identification code for the host computer.” Id. at 1:44–52. The “license record” is
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`stored in “another (second) non-volatile section of the BIOS, e.g. E2PROM (or the
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`ROM).”2 Id.at 1:59–2:1. The ’941 Patent distinguishes the storage location of the
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`key and the license record: “It should be noted that unlike the first non-volatile
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`section, the data in the second non-volatile memory may optionally be erased or
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`modified (using E2PROM manipulation commands), so as to enable to add, modify
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`or remove licenses.” Id. 2:1–5. The key is used to encrypt the license record,
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`creating a locally stored, device-specific license record for the program under
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`license. Id. at 1:59–2:26.
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`The ’941 Patent alleges two primary benefits of the invention. First, by
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`encrypting the license record with a key unique to the host computer and stored in
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`ROM, a program licensed for one computer cannot simply be transferred with the
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`license record to another computer, because the key for the second computer will
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`be different. Id. at 2:27–47. “It is important to note that the hacker is unable to
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`modify the key in the ROM of the second computer to” the key of the first
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`computer because “the contents of the ROM is established during manufacture and
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`is practically invariable.” Id. at 2:42–47.
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`
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` 2
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` E2PROM is another spelling of EEPROM.
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`Second: “An important advantage in utilizing non-volatile memory such as
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`that residing in the BIOS is that the required level of system programming
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`expertise that is necessary to intercept or modify commands, interacting with the
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`BIOS, is substantially higher than those needed for tampering with data residing in
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`volatile memory such as hard disk.” Id. at 3:4–9. In other words, because
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`manipulation of E2PROM was more difficult than manipulation of the device’s
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`RAM or hard disk, the license record could be stored in E2PROM to make it more
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`tamper proof. Id. at 3:4–17.
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`The alleged invention is depicted with respect to Figure 1 of the ’941 Patent,
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`shown below. The first non-volatile memory (4)—“e.g. the ROM section of the
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`BIOS,” id. at 5:9–16—stores a key (8). The second non-volatile memory (5)—
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`“e.g. the E2PROM section of the BIOS,” id.—stores license records (10, 11, 12).
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`The volatile memory (6)—“e.g. the inter