`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`
`
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`
`__________
`
`
`Case IPR2021-00581
`Patent No. 6,411,941
`
`______________
`
`
`
`
`
`DECLARATION OF DR. DAVID MARTIN ON INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,411,941
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`
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`Atty. Dkt. No.: ANCC0123IPR
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`TABLE OF CONTENTS
`
`
`List of Exhibits ...................................................................................................... 4
`
`I.
`
`II.
`
`Qualifications and Professional Experience ................................................. 7
`
`Background of this Matter ........................................................................... 8
`
`III.
`
`Summary of Opinions Regarding the Validity of the ’941 Patent ................. 9
`
`IV. High-Level Description of Materials Studied ..............................................10
`
`V.
`
`Relevant Legal Principles ...........................................................................11
`
`A.
`B.
`C.
`D.
`
`E.
`F.
`G.
`H.
`
`I.
`J.
`
`Presumption of Validity ....................................................................11
`Anticipation ......................................................................................11
`Obviousness ......................................................................................14
`Prior Art Considered by the Examiner, and Prior Art that Is
`Cumulative to the Prior Art Considered by the Examiner .................19
`Claim Construction ...........................................................................20
`Abstract Ideas ...................................................................................31
`The Manner of Rebuttal ....................................................................32
`The Level of Ordinary Skill in the Art and Person of Ordinary
`Skill in the Art ..................................................................................32
`Avoidance of Impermissible Hindsight .............................................34
`Requirements for Asserting Obviousness ..........................................34
`
`VI. Technology Background .............................................................................35
`
`VII. The References Addressed in the Wolfe Declaration ..................................42
`
`VIII. General Comments on the Wolfe Declaration .............................................43
`
`A.
`B.
`
`Frequent Use of Impermissible Hindsight .........................................43
`Inadequacy of Addressing the Expectation of Success ......................44
`
`IX. Rebuttal to Dr. Wolfe’s Opinions Regarding the ’941 Patent ......................45
`
`A. Hellman, Chou, and/or Schneck Does Not Invalidate the
`Asserted Claims of the ’941 Patent ...................................................45
`1.
`Alleged Memory of the BIOS .................................................52
`2.
`No Motivation to Combine .....................................................58
`3.
`Dependent Claims ...................................................................58
`a.
`Claim 2 .........................................................................58
`b.
`Claim 3 .........................................................................58
`c.
`Claim 6 .........................................................................60
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`Atty. Dkt. No.: ANCC0123IPR
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`d.
`e.
`f.
`g.
`h.
`i.
`j.
`k.
`
`Claim 7 .........................................................................60
`Claim 9 .........................................................................60
`Claim 10 .......................................................................60
`Claim 11 .......................................................................61
`Claim 12 .......................................................................61
`Claim 13 .......................................................................63
`Claim 14 .......................................................................63
`Claim 16 .......................................................................63
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`Case No.: IPR2021-00581
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`List of Exhibits
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`Atty. Dkt. No.: ANCC0123IPR
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`Description
`
`Exhibit No.
`Ex. 2001 RESERVED
`Ex. 2002 RESERVED
`Ex. 2003 RESERVED
`Ex. 2004 Apple Inc.’s N.D. Cal. Patent L.R. 3-3 Disclosures (Invalidity
`Disclosures)
`Ex. 2005 Defendants HTC America, Inc. and HTC Corporation’s
`Preliminary Non-Infringement and Invalidity Contentions
`Ex. 2006 RESERVED
`Ex. 2007 Email requesting permission to file motion to terminate
`Ex. 2008 Ancora v. Samsung Fourth Amended Scheduling Order
`Ex. 2009 Expert Report of Suzanne Barber Regarding Invalidity of U.S.
`Patent No. 6,411,941
`Ex. 2010 Ancora v. HTC Order Setting Patent Case Schedule
`Ex. 2011
`Samsung and LG Invalidity Contentions and Select Invalidity
`Charts
`Ex. 2012 Ancora v. HTC Affidavit of Service
`Ex. 2013
`IAM Article Judge Albright Interview
`Ex. 2014 VLSI v. Intel Jury Verdict Form
`Ex. 2015 Ancora v. LG Rebuttal Report of David Martin
`Ex. 2016
`Ancora’s Preliminary Response to Petition, Case No. IPR2020-
`NEW
`01609 (Dkt. 6)
`Ex. 2017
`Decision Granting Institution, Case No. IPR2020-01609 (Dkt. 7)
`NEW
`Ex. 2018
`NEW
`Ex. 2019
`NEW
`Ex. 2020
`NEW
`
`Declaration of Dr. David Martin, Ph.D.
`
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014)
`
`Telephonic Markman Hearing Tentative Ruling, Ancora
`Technologies, Inc. v. TCT Mobile (US), Inc. et al., Case No. 8:19-
`cv-02192 (CDCA) (Dkt. #60)
`US Patent 6,189,146 B1 (“Misra”)
`
`Ex. 2021
`NEW
`Ex. 2022
`NEW
`
`US Patent 5,479,639 (“Ewertz”)
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`Case No.: IPR2021-00581
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`Atty. Dkt. No.: ANCC0123IPR
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`Exhibit No.
`Ex. 2023
`NEW
`Ex. 2024
`NEW
`
`Ex. 2025
`NEW
`
`Description
`Microsoft Corporation’s Request for Ex Parte Reexamination
`Image File Wrapper, Control No. 90010560
`Final Rulings on Claim Construction, Ancora Technologies, Inc. v.
`TCT Mobile (US), Inc. et al., Case No. 8:19-cv-02192 (CDCA)
`(Dkt. #66, #69)
`Phil Croucher, “The BIOS Companion,” Tri-Tam Enterprises Inc.
`1997
`
`
`
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`I, David Martin, hereby declare as follows:
`
`Atty. Dkt. No.: ANCC0123IPR
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`1.
`
`I am making this declaration at the request of Patent Owner, Ancora
`
`Technologies, Inc., to investigate and opine on certain issues relating to the Inter
`
`Partes review of U.S. Patent No. 6,411,941 (“the ’941 patent”). The Petition
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`requests that the Patent Trial and Appeal Board (“PTAB” or “Board”) review and
`
`cancel claims 1–3, 6–14, and 16 of the ’941 patent.
`
`2.
`
`I am being compensated for my work in this matter at a rate of $525
`
`per hour. My compensation in no way depends on the outcome of this proceeding.
`
`3.
`
`In preparation of this declaration, I have studied the exhibits as listed
`
`in the Exhibit List shown above in my report.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`a. The documents listed above as well as additional patents and
`
`documents referenced herein;
`
`b. The relevant legal standards, including the standard for obviousness
`
`provided in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
`
`(2007), and any additional documents cited in the body of this
`
`declaration; and
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`c. My knowledge and experience based upon my work and study in this
`
`area as described below.
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`Case No.: IPR2021-00581
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`I.
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`Qualifications and Professional Experience
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`Atty. Dkt. No.: ANCC0123IPR
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`5.
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`I have provided my full background in the curriculum vitae that is
`
`attached to this Declaration as Appendix A.
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`6.
`
`In this report, I respond to the expert opinions originally provided in
`
`the report by Dr. Andrew Wolfe (“Wolfe Declaration”) that was submitted by the
`
`TCT petitioners in IPR2020-01609 (Ex. 1003) from which Sections I.C-IV have
`
`been adopted by Dr. Erez Zadok (Ex. 1015) in a separate declaration (“Zadok
`
`Declaration”) that was submitted by the Petitioner.
`
`7.
`
`This report is based on my study of the material that was available to
`
`me at the time of its writing. I reserve the right to update, supplement, or amend
`
`this rebuttal expert report in view of additional information obtained through
`
`discovery or other information that might become available between now and trial
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`that is significant to the opinions set forth in herein.
`
`8.
`
`In this report, due to my understanding of the law, I am not offering
`
`an opinion regarding each cited reference or combination of references beyond
`
`responding to the opinions and evidence identified in the Wolfe Declaration as
`
`adopted by the Zadok Declaration. Further, I have not responded to each and every
`
`assertion made in the Wolfe Declaration and instead have focused on what I
`
`consider to be the clearest faults in its arguments and proofs. My decision not to
`
`address an issue or argument thus should not be understood as a tacit admission
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`that I agree with or do not dispute the positions of the Sony petitioners.
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`Atty. Dkt. No.: ANCC0123IPR
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`9.
`
`I further note that, except where stated otherwise, I have assumed for
`
`purposes of my analysis that each reference or combination cited in the Wolfe
`
`Declaration as adopted by the Zadok Declaration actually constitutes prior art.
`
`II. Background of this Matter
`
`10.
`
`It is my understanding TCT Mobile (US) Inc., Huizhou TCL Mobile
`
`Communication Co., Ltd., and Shenzhen TCL Creative Cloud Technology Co.,
`
`Ltd. (collectively, “TCT”) filed a Petition in IPR2020-01609 (“the ’1609 IPR”),
`
`requesting an inter partes review (“IPR”) of claims 1−3, 6−14, and 16 (“the
`
`Challenged Claims”) of U.S. Patent No. 6,411,941. It is my understanding Ancora
`
`filed a preliminary response challenging certain issues of the TCT petition but did
`
`not file an expert declaration rebutting any arguments set forth by Dr. Wolfe. It is
`
`further my understanding the Patent Trial and Appeal Board instituted TCT’s
`
`petition on February 16, 2021.
`
`11.
`
`It is my understanding that several parties sought to “join” TCT’s
`
`instituted petition,
`
`including: HTC Corporation and HTC America, Inc.
`
`(collectively, “HTC”) in IPR2021-00570 (“the ’570 IPR”); LG Electronics, Inc.
`
`and LG Electronics U.S.A., Inc. (collectively, “LG”) in IPR2021-00581 (“the ’581
`
`IPR”); and Sony Mobile Communications AB, Sony Mobile Communications,
`
`Inc., Sony Electronics Inc., and Sony Corporation (collectively, “Sony”) in
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`IPR2021-00663 (“the ’663 IPR”).
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`Atty. Dkt. No.: ANCC0123IPR
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`12. Lastly, it is my understanding the Board allowed Ancora to file a
`
`preliminary response by April 23, 2021. I have therefore been asked to respond to
`
`the invalidity theories, contentions, and opinions set forth within the Wolfe
`
`Declaration.
`
`III. Summary of Opinions Regarding the Validity of the ’941 Patent
`
`13.
`
`In the Wolfe Declaration, Dr. Wolfe opined that various references are
`
`invalidating prior art to the Challenged Claims of the ’941 patent under 35 U.S.C.
`
`§§ 102 (anticipation) and 103 (obviousness).
`
`14.
`
`In this declaration, I provide my opinions in response to the various
`
`allegations of invalidity made in the Wolfe Declaration, as well as the bases for my
`
`opinions. Based on my review of the ’941 patent, the Wolfe Declaration, and the
`
`references addressed therein, it is my opinion that the Wolfe Declaration does not
`
`overcome the presumption of validity for the Challenged Claims. To the contrary,
`
`and as I explain below, it only further reinforces that the Asserted Claims of the
`
`’941 patent are valid and patentable.
`
`15. My opinion is supported by the fact that the purported anticipatory
`
`references relied upon in the Wolfe Declaration did not disclose every limitation of
`
`each of the Challenged Claims. In fact, I have found at least one limitation for each
`
`of the Challenged Claims that the Wolfe Declaration fails to show was disclosed
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`Patent No.: 6,411,941
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`by each of the cited references. I identify those undisclosed limitations on a claim-
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`Atty. Dkt. No.: ANCC0123IPR
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`by-claim, reference-by-reference basis below.
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`16.
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`It is also my opinion that the Wolfe Declaration does not show that
`
`the Challenged Claims are obvious in view of any reference, combination of
`
`references, or general knowledge of one of ordinary skill in the art.
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`17. All of the opinions contained within this declaration are based on my
`
`own personal knowledge and professional judgment. If called as a witness in this
`
`matter, I am prepared to testify about these opinions.
`
`IV. High-Level Description of Materials Studied
`
`18. Before writing this declaration, I studied the ’941 patent and its file
`
`history. I also studied the Wolfe Declaration and the references cited therein. I
`
`further considered additional material noted in this report.
`
`19.
`
`It is my understanding that this Board has provided a preliminary
`
`claim construction for the term “license record.” It is also my understanding that
`
`Ancora and Petitioners have provided certain claim construction positions in the
`
`underlying district court litigation.
`
`20.
`
`I have used
`
`this Board’s preliminary construction and
`
`the
`
`constructions provided by Ancora and Petitioners in forming the opinions of
`
`validity that are set forth in this declaration. For all other terms found in the
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`Challenged Claims, I have used the plain and ordinary meaning of the term as it
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`would be understood by a person of ordinary skill in the art as of the time of the
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`Atty. Dkt. No.: ANCC0123IPR
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`invention of the ’941 patent.
`
`21. My conclusion is that the Challenged Claims of the ’941 patent are
`
`valid in view of the Board’s preliminary construction of “license record, Ancora’s
`
`proposed constructions, and Sony’s proposed constructions.
`
`V. Relevant Legal Principles
`
`22. Although I am not an attorney, I have been advised by the attorneys
`
`for Ancora of certain legal principles as they relate to forming opinions as to the
`
`issues of validity of the Asserted Claims. I have applied this law to the facts set
`
`forth in this report in rendering my opinions. This section of my expert report
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`provides my understanding of the legal principles that I have used in formulating
`
`my opinions.
`
`A.
`
`Presumption of Validity
`
`23.
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`It is my understanding that an issued patent and the claims within it
`
`are presumed valid. It is my further understanding that the basis for that
`
`presumption of validity is that the allowed claims went through a rigorous
`
`examination process at the U.S. Patent Office.
`
`B. Anticipation
`
`24.
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`I understand that “anticipation” under 35 U.S.C. § 102 exists only if a
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`single prior art reference or product discloses or contains, expressly or inherently,
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`each and every limitation of the claim at issue. In other words, every limitation of
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`Atty. Dkt. No.: ANCC0123IPR
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`the claim must identically appear in a single prior art reference for the reference to
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`anticipate that claim.
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`25.
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`I also understand that all elements of the claim must be disclosed in
`
`the reference as they are arranged in the claim. I also understand that, to be
`
`considered anticipatory, the prior art reference must be enabling and must describe
`
`the patentee’s claimed invention sufficiently to have placed it in the possession of a
`
`person of ordinary skill in the field of invention. I further understand that the
`
`relevant standards for what constitutes “prior art,” for purposes of anticipation
`
`under the relevant paragraphs of §102, are as follows (emphases added):
`
`(a) [T]he invention was known or used by others in this country, or
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`patented or described in a printed publication in this or a foreign
`
`country, before the invention thereof by the applicant for patent, or
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`(b) [T]he invention was patented or described in a printed publication
`
`in this or a foreign country or in public use or on sale in this country,
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`more than one year prior to the date of the application for patent in the
`
`United States, or
`
`. . .
`
`(e) [T]he invention was described in—(1) an application for patent,
`
`published under section 122(b), by another filed in the United States
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`before the invention by the applicant for patent or (2) a patent granted
`
`on an application for patent by another filed in the United States
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`before the invention by the applicant for patent, except that an
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`international application filed under the treaty defined in section
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`351(a) shall have the effects for the purposes of this subsection of an
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`application filed in the United States only if the international
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`application designated
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`the United States and was published
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`under Article 21(2) of such treaty in the English language
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`. . .
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`(g)(2) [B]efore such person’s invention thereof, the invention was
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`made in this country by another inventor who had not abandoned,
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`suppressed, or concealed it. In determining priority of invention under
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`this subsection, there shall be considered not only the respective dates
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`of conception and reduction to practice of the invention, but also the
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`reasonable diligence of one who was first to conceive and last to
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`reduce to practice, from a time prior to conception by the other.
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`26. To be “known or used by others in this country” under § 102(a), the
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`knowledge or use of the invention must be accessible to the public. If a process is
`
`used in secret, and if the public is unable to learn the process by examining the
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`product that is eventually sold, then that process is not publicly accessible.
`
`27.
`
`I understand that a “public use” under 35 U.S.C. § 102(b) may be
`
`established by showing a public, non-secret, non-experimental use of the invention
`
`in the United States prior to the critical date. Use of an invention may be public
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`where it is exposed or demonstrated to persons other than the inventor, who are
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`under no obligation of secrecy and where there is no attempt to keep the device
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`from the public.
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`Atty. Dkt. No.: ANCC0123IPR
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`28.
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`I understand that, for purposes of § 102, the term “printed
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`publication” means a publication that is sufficiently accessible to the public
`
`interested in the art. I understand that the critical factor for determining whether a
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`reference constitutes a “printed publication” under § 102 is “public accessibility.” I
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`further understand that a reference is “publicly accessible” only if Petitioners make
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`“a satisfactory showing that such document has been disseminated or otherwise
`
`made available to the extent that persons interested and ordinarily skilled in the
`
`subject matter or art, exercising reasonable diligence, can locate it and recognize
`
`and comprehend therefrom the essentials of the claimed invention without the need
`
`of further research or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445
`
`F.3d 1374, 1378 (Fed. Cir. 2006) (quoting I.C.E. Corp. v. Armco Steel Corp., 250
`
`F. Supp. 738, 743 (S.D.N.Y. 1966)).
`
`C. Obviousness
`
`29.
`
`I understand that, in order to be considered as “prior art” for purposes
`
`of the § 103 obviousness inquiry, a reference must first qualify as “prior art” under
`
`one of the definitions stated above in the context of § 102.
`
`30.
`
`In order to be considered as “prior art” for purposes of the § 103
`
`obviousness inquiry, a reference must also be “analogous” to the Patent-in-Suit. I
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`understand that a reference is “analogous” if (1) the reference is from the same
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`field of endeavor as the claimed invention (even if it addresses a different
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`Atty. Dkt. No.: ANCC0123IPR
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`problem); or (2) the reference is reasonably pertinent to the problem faced by the
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`inventor (even if it is not in the same field of endeavor as the claimed invention).
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`31.
`
`I understand that the relevant standard for obviousness is as follows:
`
`A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title, if the
`
`differences between the subject matter sought to be patented and the
`
`prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains.
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`Patentability shall not be negatived by the manner in which the
`
`invention was made.
`
`35 U.S.C. § 103(a) (pre-America Invents Act); Manual of Patent Examining
`
`Procedure § 2141.
`
`32. Stated another way, to show that a patent is “obvious” based on an
`
`alleged prior art reference or a combination of such references, it must be shown
`
`that a person of ordinary skill in the art would have been motivated to combine the
`
`teachings of the prior art references to achieve the claimed invention, and that such
`
`person of ordinary skill in the art would have had a reasonable expectation of
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`success in doing so. To do this, a Defendant must show how and why a skilled
`
`artisan would have had a reason to combine the interrelated teachings of the prior
`
`art references.
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`33. Petitioners may show that a claim is invalid for obviousness under 35
`
`U.S.C. § 103 if they demonstrate that two or more prior art references in
`
`combination disclose, expressly or inherently, every claim limitation so as to
`
`render the claim, as a whole, obvious. Alternatively, Petitioners may show that a
`
`claim is invalid for obviousness under 35 U.S.C. § 103 if a single prior art
`
`reference combined with the knowledge of one of ordinary skill in the art discloses
`
`every claim limitation so as to render the claim, as a whole, obvious.
`
`34.
`
`It is my understanding that in assessing the obviousness of claimed
`
`subject matter, one should evaluate obviousness over the prior art from the
`
`perspective of one of ordinary skill in the art at the time that invention was made
`
`(and not from the perspective of either a layman or a genius in that art). The
`
`question of obviousness is to be determined based on:
`
`(a) The scope and content of the prior art;
`
`(b) The difference or differences between the subject matter of the
`
`claim and the prior art (whereby in assessing the possibility of
`
`obviousness one should consider the manner in which a patentee
`
`and/or a Court has construed the scope of a claim);
`
`(c) The level of ordinary skill in the art at the time of the alleged
`
`invention of the subject matter of the claim; and,
`
`(d) Any relevant objective factors (the “secondary considerations”)
`
`indicating non-obviousness. It is also my understanding that the
`
`United States Supreme Court clarified the law of obviousness in KSR
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`Case No.: IPR2021-00581
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`Atty. Dkt. No.: ANCC0123IPR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR” herein). I have
`
`read that opinion and incorporate it here by reference. Based on KSR,
`
`it is my understanding that to determine whether it would have been
`
`obvious to combine known elements in a manner claimed in a patent,
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`one may consider such things as the interrelated teachings of multiple
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`patents, the effects of demands known to the design community or
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`present in the marketplace, and the background knowledge of one
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`with ordinary skill in the art. The secondary considerations at issue
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`may include commercial success of a product using the invention, if
`
`that commercial success is due to the invention; long-felt need for the
`
`invention; evidence of copying of the claimed invention; industry
`
`acceptance; initial skepticism; failure of others; and praise of the
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`invention. (I discuss these secondary considerations below.)
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`35.
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`I also understand that while an analysis of any teaching, suggestion, or
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`motivation to combine elements from different prior art references is useful in an
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`obviousness analysis, the overall inquiry must be expansive and flexible.
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`36.
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`I further understand that it is impermissible to use a hindsight
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`reconstruction of references to reach the claimed invention without any
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`explanation as to how or why the references would be combined to produce the
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`claimed invention.
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`37. Moreover, I understand that a patent composed of several elements is
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`not proved obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art. But multiple prior art references or elements
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`may, in some circumstances, be combined to render a patent claim obvious. I
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`Atty. Dkt. No.: ANCC0123IPR
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`understand that I should consider whether there is an “apparent reason” to combine
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`the prior art references or elements in the way the Challenged Claim does.
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`Requiring a reason for the prior art combination protects against distortion caused
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`by hindsight. Along the same lines, one cannot use the Patent-in-Suit as a blueprint
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`to piece together the prior art in order to combine the right ones in the right way as
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`to create the claimed invention(s).
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`38. To determine whether there is such an “apparent reason” to combine
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`the prior art references or elements in the way that an Challenged Claim does, it
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`may be necessary to look to the interrelated teaching of multiple references, to the
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`“effects of demands known to the design community or present in the marketplace,
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`and to the background knowledge possessed by a person having ordinary skill in
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`the art.” KSR at 418.
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`39.
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`I also understand that when the prior art teaches away from combining
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`prior art references or certain known elements, discovery of a successful means of
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`combining them is more likely to be non-obvious. A prior art reference may be
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`said to teach away from a claim when a person of ordinary skill, upon reading the
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`reference, would be discouraged from following the path set out in the claim or
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`would be led in a direction divergent from the path that was taken by the claim.
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`Additionally, a prior art reference may teach away from a claimed invention when
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`Case No.: IPR2021-00581
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`substituting an element within that prior art reference for a claim element would
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`Atty. Dkt. No.: ANCC0123IPR
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`render the claimed invention inoperable.
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`40.
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`It is my further understanding that given the presumption that an
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`allowed patent claim is valid, in order to assert that an allowed patent claim is
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`invalidated by one or more prior art references, it is necessary to show that a
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`reference (or an appropriate combination of references):
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`(a) Is (are) properly considered as being prior art to the patent
`
`containing the claim, and
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`(b) Discloses (disclose) each and every limitation of that claim either
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`expressly or inherently.
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`D.
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`Prior Art Considered by the Examiner, and Prior Art that
`Is Cumulative to the Prior Art Considered by the Examiner
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`41.
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`I understand that, when Petitioners rely upon a prior art reference that
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`was also before the USPTO Examiner for consideration, weight may be given to
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`the Examiner’s view of the reference, as not invalidating the patent, regardless of
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`whether invalidity has been proved by a preponderance of the evidence. The
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`burden on Petitioners—of proving invalidity by a preponderance of evidence—is
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`particularly heavy when the prior art reference at issue was also considered by the
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`Examiner.
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`42. That heavy burden also applies when Petitioners rely upon a prior art
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`reference that is “cumulative” to the prior art references that were considered by
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`Case No.: IPR2021-00581
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`the USPTO Examiner. A prior art reference is considered “cumulative” if it teaches
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`Atty. Dkt. No.: ANCC0123IPR
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`no more than what a reasonable Examiner would consider to be taught by the prior
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`art already before the Patent Office.
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`E. Claim Construction
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`43. To determine whether the Challenged Claims are valid in light of the
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`prior art, it is necessary to understand the meaning of the various claim terms. I
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`understand that claims of a patent are to be construed based on their claim
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`language, the patent’s specification, and the patent’s file history. I understand that
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`one also may look at extrinsic evidence to help decipher the meaning and
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`construction of the claims, including, but not limited to, sources such as
`
`appropriate dictionaries, the general knowledge of one skilled in the art, treatises,
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`white papers, relevant journals, etc., as long as that extrinsic evidence does not
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`contradict the patent’s claims, file history, or specification.
`
`44.
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`I further understand that a patentee may choose to be his/her own
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`lexicographer and define a term differently than the term’s plain and ordinary
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`meaning in the art and that, under such circumstances, the patentee’s own
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`definition should control. Additionally, a claim term may not be entitled to its plain
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`and ordinary meaning in the art, when the patentee has expressly disclaimed the
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`scope under such plain and ordinary meaning through descriptions in the
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`specifications or statements made during prosecution of the patent applications.
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`Atty. Dkt. No.: ANCC0123IPR
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`45.
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`I have been informed that a person of ordinary skill in the art is
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`deemed to read a claim term not only in the context of the particular claim in
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`which the term appears, but also in the context of the entire patent, including the
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`specification, other claims, and prosecution history.
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`46.
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`I understand that a dependent claim is a claim that incorporates by
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`reference all limitations of its independent claim and of any intervening claims. As
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`a general guideline, the scope of a dependent claim is narrower than that of its
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`independent claim.
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`47. For purposes of my opinions in this report, I have been asked to
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`assume a priority date of at least March 31, 1997, based on the Ancora source code
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`productions, or at least May 21, 1998, based on the Israeli Patent Application No.
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`124571.
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`48. When I refer to one of ordinary skill in the art in my opinion below, I
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`am referring to one of ordinary skill in the art as of the relevant date set forth
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`above.
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`49. For ease of reference, below is a reproduction of each of the
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`Challenged Claims of the ’941 patent.
`
`Claim
`1[a]
`
`
`Language
`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
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`Case No.: IPR2021-00581
`Patent No.: 6,411,941
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`Claim
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`1[b]
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`1[c]
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`1[d]
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`1[e]
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`2
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`3
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`6
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`Atty. Dkt. No.: ANCC0123IPR
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`Language
`memory area; the method comprising the
`steps of:
`selecting a program residing in the volatile
`memory,
`using an agent to set up a verification
`structure in the erasable, non-volatile memory
`of the BIOS, the verification structure
`accommodating data that includes at least one
`license record,
`verifying the program using at least the
`verification structure from the erasable
`nonvolatile memory of the BIOS, and
`acting on the program according to the
`verification.
`A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.
`A method according to claim 2, wherein
`setting up a verification structure