PTO/SB/57 (02-09)
`Approved for use through 08/31/2010. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.:
`
`418263007US
`
`Date:
`
`1.
`
`x
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
` . The request is made by:
`June 25, 2002
`issued
`6,411,941
`patent owner.
`third party requester.
`
`x
`
`2. x The name and address of the person requesting reexamination is:
`Chun M. Ng
`Perkins Coie LLP
`P.O. Box 1247
`Seattle, WA 98111-1247
`
`3.
`
`is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(1);
`a. A check in the amount of $
`b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(1)
`50-0665
` ; or
`to Deposit Account No.
`171
`c. Payment by EFT Account SEA1PIRM in the amount of $2,520.00 is hereby authorized.
`check or I x I credit to Deposit Account No.
`4. x Any refund should be made by
`50-0665
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`5. x A copy of the patent to be reexamined having a double column format on one side of a separate paper
`is enclosed. 37 CFR 1.510(b)(4)
`6. n CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`
`n Landscape Table on CD
`7. ri N• ucleotide and/or Amino Acid Sequence Submission
`
`
`
` If applicable, items a. — c. are required.
`a.
`Computer Readable Form (CRF)
`b. Specification Sequence Listing on:
`
`1.
`
`CD-ROM (2 copies) or CD-R (2 copies); or
`
`paper
`
`C. ri Statements verifying identity of above copies
`
`8.
`
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is
`included.
`
`1-19
`
` is requested.
`
`9• ri R• eexamination of claim(s)
`10. F7 A• copy of every patent or printed publication relied upon is submitted herewith including a listing thereof
`
`
`
`11.
`
` on Form PTO/SB/08, PTO-1449, or equivalent.
`An English language translation of all necessary and pertinent non-English language patents and/or
`printed publications is included.
`
`41826-3007/LEGAL16251205.1
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`Under the Paoervvork Reduction
`
`PTO/SB/57 (02-09)
`Approved for use through 08/31/2010. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`f information unless it displays a valid OMB control number.
`
`12.
`
`x
`
`The
`attached detailed request includes at least the following items:
`A statement identifying each substantial new question of patentability based on prior
`a.
`patents and printed publications. 37 CFR 1.510(b)(1)
`An identification of every claim for which reexamination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited art to every claim
`for which reexamination is requested. 37 CFR 1.510(b)(2)
`
`b.
`
`13.
`
`
`
`A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
`
`14.
`
`x
`
`a.
`
`It is certified that a copy of this request (if filed by other than the patent owner) has been
`served in its entirety on the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`Robert Kinberg
`Venable LLP
`575 7th Street NW
`Washington, DC 20004
`
`ri b.
`
`Date of Service:
`; or
`May 28, 2009
`was not possible. A duplicate copy is enclosed since service on patent owner
`
`
`
`15.
`
`Correspondence
`
`
`Address: Direct all communication about the reexamination to:
`
`nThe
`
`address associated with Customer Number:
`
`45979
`
`OR
`
`1- 1 Firm or
`l
`1 Individual Name
`
`Address
`
`City
`Country
`
`16.
`
`f n
`
`State
`Telephone
`
`Zip
`Email
`
`
`
`The patent is currently the subject
`of the following
`concurrent proceeding(s):
`a. Copending reissue Application
`No.
`
`
`
`n b.
`
`Copending reexamination
`Control No.
`
`c. Copending Interference
`No.
`
`.
`
`.
`
`.
`
`x
`
`d. Copending litigation styled:
`Ancora Technologies,
`Inc. v. Toshiba America Information Systems, Inc. et al.,
`No. 2-09-cv-00270-MJP
`(VV.D. Wa.)
`WARNING:
`Information on this form may become public. Credit card information should not be included
`on this
`Provide credit card information and authorization on PTO-2038.
`form.
`
`uthorized Signature
`
`Chun M. Ng
`Typed/Printed Name
`
`51
`
`1,48
`70
`Date
`
`36,878
`Registration No.
`
`
`
`Patent Owner Requester For
`
`x For
`Third Party Requester
`
`41826-3007/LEGAL16251205.1
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`PROOF OF SERVICE — MAIL
`
`STATE OF WASHINGTON, COUNTY OF KING
`
`I am and was at all times herein mentioned employed in the County of King, State
`of Washington. I am over the age of 18 years and not a party to the within action or
`proceeding. My business address is 1201 Third Avenue, Suite 4800, Seattle, Washington
`98101-3099.
`
`, 2009, I served a true copy of the REQUEST FOR EX PARTE
`On Pa
`REEXAMINATION OF U.S. PATENT NO. 6,411,941 as filed with the United States
`Patent Office on the patent owner by mailing said document enclosed in a sealed envelope
`(for collection and mailing, with postage thereon fully prepaid, on the same date, following
`ordinary business practices) by Express Mail, addressed as follows:
`
`Robert Kinberg
`Venable LLP
`575 7th Street NW
`Washington, D.C. 20004
`
`I declare under penalty of perjury under the laws of the State of Washington and the
`United States of America that the foregoing is true and correct; that I am employed in the
`ose direction this service was made; and
`office of a member of the Washington bar at
`that this Proof of Service was executed on 4/ o'cr , 2009, at Seattle, Washington.
`
`Peter Sher
`
`1
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`2
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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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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re U.S. Patent of:
`
`Mullor et al.
`
`REQUEST FOR EX PARTE
`REEXAMINATION UNDER
`35 U.S.C. §302
`
`U.S. Patent No: 6,411,941
`
`Reexamination Request Control No:
`
`Not Yet Assigned
`
`Filed: October 1, 1998
`
`Issued: June 25, 2002
`
`For: METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSE LIMITATION
`
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`Dear Sir:
`Pursuant to 35 U.S.C. §§ 302-307 and 37 C.F.R. § 1.510, requester Microsoft
`Corporation hereby requests ex parte reexamination of claims 1-19 of United States
`Patent No. 6,411,941 ("the '941 patent"), which issued on June 25, 2002, to Miki Mullor
`and Julian Valiko. The '941 patent was based on an application filed October 1, 1998
`and claims priority to an application filed in Israel on May 21, 1998. A copy of the '941
`patent is attached to this request as Exhibit A. The '941 patent is currently the subject
`of pending litigation including Ancora Technologies, Inc. v. Toshiba America Information
`Systems, Inc. et aL, No. SACV 08-0626-AG (C.D. Cal.).' The original complaint for the
`
`1 The lawsuit was recently transferred to the Western District of Washington, and is now captioned as
`Ancora Technologies, Inc. v. Toshiba America Information Systems, Inc. et al., No. 2:09-cv-00270-MJP
`(W.D. Wa.)
`
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`suit is attached as Exhibit B. In the pending litigation, the patent owner has proposed
`an extremely broad claim construction that expands the scope of the patent well beyond
`the scope that was argued during the original prosecution of the '941 patent. Had the
`patent owner asserted such scope during the original prosecution, these claims would
`not have been allowed. Even with the narrower construction that the patent owner
`originally argued, the '941 patent was anticipated by the references discussed below.
`Given the current, broad claim construction that patent owner now asserts, the invalidity
`of the patent's claims is even clearer. An opening Markman brief filed by patent owner
`(hereinafter "Patent Owner's Markman Brief') is attached to this request as Exhibit C.2
`The substantial new questions of patentability raised in this request involve prior
`art questions that were not considered during prosecution of the application leading to
`the '941 patent. As detailed below, claims 1-19 of the '941 patent were anticipated
`under 35 U.S.C. § 102 in view of a patent to Robert Schwartz et al. filed in 1997.
`Claims 1-19 were also anticipated under § 102 in view of a patent to David Lewis filed in
`1994.
`
`During the original prosecution of the '941 patent, patent owner made strong
`statements distinguishing low-level programs that regularly access the BIOS from
`operating system level programs such as the claimed system. Amendment for
`Application No. 09/164,777 filed on February 5, 2002, at 5 (attached as Exhibit D).
`However, patent owner now asserts that claim 1 of the '941 patent covers any system
`that verifies a program (i.e. any set of instructions that can be executed by a computer)
`using information stored in a non-volatile memory area of the BIOS of a computer.
`Patent Owner's Markman Brief at 14-21. Thus, patent owner's arguments during
`prosecution are clearly no longer operative. Requestors respectfully assert that this
`changing story should be considered when evaluating the substantial new question of
`patentability and in any resulting reexamination.
`The prior art references cited in this request raise substantial new questions of
`patentability that were not considered during prosecution of the application leading to
`
`2 37 C.F.R. § 1.104(c)(3) (2007) ("In rejecting claims the examiner may rely upon admissions by the
`applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability").
`
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`the '941 patent and more closely match the claimed limitations than the references
`previously considered by the PTO in connection with the '941 patent.
`The prior art references on which this request is based, all of which pre-date the
`May 21, 1998 priority date of the '941 patent, are as follows:
`• U.S. Patent No. 6,153,835, "System and Method for an Electronic Postage Scale
`with Variable Function Keys and Window Screens," issued to Schwartz et al. on
`November 28, 2000, based on an application filed June 7, 1995 and claiming
`priority to an application filed October 14, 1993 ("Schwartz '835") (attached as
`Exhibit E);
`• U.S. Patent No. 5,734,819, "Method and Apparatus for Validating System
`Operation," issued to David Otto Lewis on March 31, 1998, based on an
`application filed October 12, 1994 ("Lewis '819") (attached as Exhibit F);
`The remainder of this request is organized as follows. Section I provides an
`overview of the '941 patent. Section II provides an overview of the prior art cited in this
`request. Section III summarizes the substantial new questions of patentability
`introduced by this request. Section IV explains how that art compares to the claims at
`issue (detailed claim charts appear in Exhibit I). Section V concludes with a request
`that this request be granted and that the claims at issue be rejected.
`I.
`OVERVIEW OF THE '941 PATENT
`The '941 patent is directed to a method for enforcing a license restriction on a
`software program. '941 Patent at Abstract. The system uses a verification structure in
`a non-volatile memory area of the BIOS of a computer to verify that the computer is
`licensed to run the software program. Id. at C6:59-67. The specification of the '941
`patent does not define "BIOS"; however, the term is well-known in the computer
`industry. According to the IBM Dictionary of Computing (excerpts attached as Exhibit
`G), the Basic Input/Output System (BIOS) is "[c]ode that controls basic hardware
`operations, such as interactions with diskette drives, hard disk drives, and the keyboard.
`IBM Dictionary 56, 65. As described in the '941 patent's specification, the BIOS may
`include both a read-only memory (ROM) section and an electrically erasable
`programmable read-only memory (EEPROM) section. In addition, during prosecution
`patent owner distinguished the claims over a prior art reference that stored license
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`information in persistent storage on a hard drive or magnetic disk drive. Amendment for
`Application No. 09/164,777 filed on February 5, 2002, at 5-7. Thus, "BIOS", as used in
`the '941 patent, apparently refers to a memory area in a computer that encompasses
`multiple non-volatile memory components but does not include a hard drive. The
`purported inventive aspect of the method is that it uses a writeable portion of the BIOS
`to store a verification structure for the software program. Id.
`Figure 2 below shows the basic process for executing the method of the '941
`patent. As shown in the figure, the process is a simple sequence of selecting a
`software program, setting up a verification structure in the BIOS, verifying the program
`using the verification structure, and acting on the verification. '941 patent at C6:4-52.
`During the setup phase, the system creates a verification structure and stores the
`structure in a non-volatile area of the BIOS. Id. at C6:18-28. During the verification
`Id. at
`phase, the system verifies the license using the stored verification structure.
`C6:29-39. After the verification phase, the system acts on the program based on the
`verification. Id. at C6:40-52.
`
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`17
`
`18
`
`19
`
`20
`
`SELECTING
`
`SETTING UP
`
`VERIFYING
`
`ACTING
`
`Claim 1 is directed to exactly this process.3 Claim 1 reads as follows:
`
`1. A method of restricting software operation within a
`license for use with a computer including an erasable, non-
`volatile memory area of a BIOS of the computer, and a
`volatile memory area; the method comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the
`that
`verification structure accommodating data
`includes at least one license record,
`
`3 In the context of reexamination, the "broadest reasonable interpretation" standard provided in MPEP
`§2111 for claim interpretation during patent examination is used, and the statutory presumption of validity
`for issued patents does not apply. MPEP §2258(I)(G). The standard applied by a court during litigation
`may or may not overlap with MPEP §2111. The requester expressly reserves the right to argue a claim
`construction in the pending litigation that is different from a claim interpretation in this request.
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`verifying the program using at least the verification
`structure from the erasable non-volatile memory of
`the BIOS, and
`
`acting on the program according to the verification.
`
`The method of claim 1 consists first of selecting the program whose license is
`being verified. According to patent owner, this step simply means "running a program in
`In the next step, the
`the volatile memory." Patent Owner's Markman Brief at 16.
`system creates the verification structure (including a license record) in a non-volatile,
`erasable memory area of the BIOS.
`(Although the claim recites that this step is
`performed by an "agent", the specification provides no information on what the "agent"
`is. However, according to patent owner's statements, the "agent" is a program that
`performs a task. Id. at 17.) In the next step, the system verifies the program using the
`verification structure. The final step of the method is acting on the program based on
`the verification. This may include, for example, running the program if the verification is
`successful.
`Most of this method was well-known in the art well before the filing of the '941
`In fact, the '941 patent itself acknowledges this in the background
`patent in 1998.
`section, which states that "software based products have been developed to validate
`authorized software usage by writing a license signature onto the computer's volatile
`memory (e.g. hard drive)."4 See '941 patent at C1:19-21. Thus, based on patent
`owner's own admitted prior art, the innovation of claim 1 can only be that the license
`information was stored in a writeable memory area of the BIOS, rather than on a hard
`drive.
`
`Claim 18, which is the only other independent claim, reads as follows:
`
`18. A method for accessing an application software
`program using a pseudo-unique key stored in a first non-
`erasable non-volatile memory area of a computer, the first
`non-volatile memory
`area
`being
`unable
`to
`be
`programmatically changed, the method, comprising:
`
`4 It should be noted that the specification misuses the term "volatile" here. As defined by the IBM
`Dictionary of Computing, "volatile storage" is "a storage device whose contents are lost when power is cut
`off. Contrast with nonvolatile storage". IBM Dictionary of Computing at 740. A hard drive is therefore
`non-volatile storage.
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`loading the application software program residing in a non-
`volatile memory area of the computer;
`
`using an agent to perform the following steps:
`
`extracting license information from software program;
`
`encrypting license information using the pseudo-
`unique key stored in the first non-volatile memory
`area;
`
`storing the encrypting license information in a second
`erasable, writable, non-volatile memory area of the
`BIOS of the computer;
`
`the application software
`subsequently verifying
`program based on the encrypted license information
`stored in the second erasable, writable, non-volatile
`memory area of the BIOS; and
`
`acting on the application software program based on
`the verification.
`
`The method operates on a computer system that has a pseudo-unique keys
`stored in a non-erasable section of memory. According to the specification of the '941
`patent, the pseudo-unique key may be a bit string which "uniquely identifies each first
`nonvolatile memory" or is "of sufficient length such that: there is an acceptably low
`probability of a successful unauthorized transfer of licensed software between two
`computers. . . ."
`'941 patent at C4:10-18.
`In addition, the key for identifying the
`computer "may be composed of the pseudo-unique key exclusively, or, if desired, in
`combination with information, e.g., .information relating to the registration of the
`user. . . ." Id. at C4:6-10.
`The application being accessed is loaded from the nonvolatile memory. An
`agent then executes a set of steps. As discussed above, according to patent owner's
`statements, this simply means that a software program performs the steps.
`In any
`event, the agent extracts license information from the program and encrypts the license
`
`5 Interestingly, Patent Owner's Markman brief proposes that "pseudo-unique key" be construed to mean
`"data that is not necessarily unique." Patent Owner's Markman Brief at 10.
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`information using the key. The encrypted information is then stored in a writeable, non-
`volatile memory area in the BIOS of the computer.
`At a later point, the agent verifies the program based on the encrypted license
`information. According to the specification, a system may verify a program by again
`extracting the license information from the program and re-generating the encrypted
`license information using the pseudo-unique key. The system then compares the
`If the stored encrypted license
`generated information to the stored information.
`information has been copied to a different computer, the re-encrypted data will differ
`from the stored data because the key is different. The program may then be terminated
`based on the failure to match.
`It is important to note that, despite patent owner's contentions during prosecution,
`software developers could use well-known techniques to develop software programs
`that accessed data in the BIOS of a computer. For example, a contemporaneously
`published textbook describes methods for using the C programming language to access
`the computer's BIOS data area to determine information about the computer's
`hardware, such as whether a LPT (line printer) was installed. MUHAMMAD ALI MAZIDI AND
`JANICE GILLISPIE MAZIDI, THE 80x86 IBM PC AND COMPATIBLE COMPUTERS (VOLS. I & II):
`ASSEMBLY LANGUAGE, DESIGN, AND INTERFACING 808-816 (2d ed. 1998) ("Mazidi")
`(attached as Exhibit H).
`II.
`PRIOR ART OVERVIEW
`
`A.
`
`The Schwartz '835 Patent
`
`The Schwartz '835 patent (assigned to Ascom Hasler Mailing Systems) disclosed
`an electronic postage scale systems Schwartz '835 at Abstract. The postage scale
`was controlled by application software that could be updated from time to time.
`Schwartz '835 at C10:15-20. During the update process, the system required a user to
`enter an authorization code to prove that the software was licensed. Figure 8 of the
`patent depicted a general structure of the electronic components of the device.
`
`6 Schwartz '835 claims priority as a division of an application filed on October 14, 1993 and is therefore
`prior art to the '941 patent under 35 U.S.C. § 102(e).
`
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`M1CROPROCESS
`
`INTERRUPT
`CONTROLLER
`
`TIMER
`
`211
`
`240
`
`13
`
`207
`
`DISPLAY
`MEMORY
`
`0
`
`03--,
`
`DISPLAY
`CONTROLLER
`
`16
`
`DISPLAY
`MODULE
`
`SPEAKER
`CIRCUITRY
`
`243
`
`261
`
`IC CARD CONNECTOR
`
`250-- MEMORY
`SECTION
`2500
`
`50c
`
`250d —
`
`KEYBOARD
`INTERFACE
`
`KEYBOARD
`
`1
`
`U
`U
`A
`A
`A
`A
`R
`R
`R
`R
`T
`T
`T
`T
`7 - 7- 7- 7-
`2330 233b 233c 233d 2350
`
`ROM _-213
`
`_-235b
`
`FIG. 8
`As shown in the figure, the system included a memory section 250 and a ROM
`213. The ROM stored a unique serial number that was pre-assigned to the system.
`See Schwartz '835 at C7:48-50. The memory section had multiple sections 250a-d,
`including a flash EEPROM section 250a and an erasable programmable read-only
`memory (EPROM) 250b. Id. at C7:50-54. As shown below in Figure 9, the system's
`memory space included a BIOS module 309, which was stored partially on the flash
`EEPROM 250a and partially on the EPROM 250b. Thus, as with the '941 patent, part
`of the BIOS was stored in a memory component that was difficult to modify (EPROM),
`while another part was stored in a memory component that was easier to modify
`(EEPROM).
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`250
`
`301
`
`BOOT MODULE
`
`BIOS MODULE
`
`ZIP/ ZONE MODULE
`
`CONFIGURATION MODULE
`
`ACCOUNTING INFORMATION FILES
`
`MANIFEST INFORMATION FILES
`
`/250b
`
`1
`
`2500
`
`1 2500
`
`309
`
`305
`
`307
`
`351
`
`353 —
`
`250d-
`
`FIG. 9
`When new software was installed to the system, a user was required to enter an
`authorization number.
`Id. at C10:21-25. The authorization number was based on
`information specific to the particular system, including the serial number and model
`number of the device and version numbers of various databases. Id. at C10:25-37.
`The system verified the initial authorization by generating an electronic signature based
`on the same system information. Id. at C10:45-49. If the results matched, the system
`stored the authorization information in a memory buffer.
`Id. at C10:47-54.
`Subsequently, the system used the stored signature to verify authorization by
`generating an electronic signature based on the same system information.
`Id. at
`C11:24-36. The system then compared the generated electronic signature against the
`electronic signature stored in the memory buffer.
`Id. at C11:36-38.
`If the values
`matched, the system began operating (i.e. the software was executed). Id. at C11:38-
`40.
`
`According to Schwartz '835, the disclosed verification method was useful to deter
`unauthorized copying because "even though the software [could] be copied onto 0
`similar systems, the latter [systems] would not be operational without proper
`authorization numbers, which need to be derived in part from their respective serial
`numbers." Id. at C12:30-41.
`
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`B.
`
`The Lewis '819 Patent
`
`Like Schwartz '835, the Lewis '819 patent (assigned to IBM) also disclosed a
`method and system for validating aspects of a computer system.' Lewis '819 at
`Abstract. According to Lewis '819, the invention met a need for a system that used a
`non-volatile memory to store critical information and was able to monitor the critical
`information to "detect whether the information has been altered so the system may not
`be run in its altered state." Id. at C2:66 to C3:3. Figure 1 shows a logical diagram of
`the system disclosed by Lewis '819.
`
`( 12
`
`MEMORY
`
`c14
`
`CPU
`
`c20
`
`NON-VOLATILE
`MEMORY
`
`c16
`
`c1 8
`
`CHIP ID
`REGISTER
`
`DEVICE
`
`1 of
`
`Fig. 1
`As shown in Figure 1, the system included a CPU 14 and a memory unit 12 that
`"contain[ed] instructions and programs that [were] executed in CPU 14." Id. at C4:23-
`27. The system also included a non-volatile memory (NVM) 20 and a system device 16
`that contained a chip ID register 18. Id. at Fig. 1; at C4:27-41. The chip ID register 18
`stored a unique chip identifier. Id. at C4:34-35. The system used system information,
`including device type and the chip ID, to generate a Message Authentication Code
`(MAC), which was an encrypted message used to verify the system. Id. at C2:7-20; at
`C4:55 to C5:9. The resulting MAC was then stored in the NVM. Id. at C5:8-9.
`
`Lewis '819 issued on March 31, 1998 from an application filed on October 12, 1994 and is therefore
`prior art to the '941 patent under 35 U.S.C. § 102(a) and § 102(e).
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`While the system was operating, it used the stored MAC to verify that the system
`had not been tampered with.
`Id. at C5:27-31. During the verification process, the
`system read system information from the NVM into memory and generated a new MAC
`based on the system information. Id. at C5:31-35. The system compared the new MAC
`to the MAC previously stored in the NVM and aborted operation if the values were not
`equal. Id. at C5:35-42. The system could also compare a chip ID value stored in the
`NVM with the chip ID in the chip ID register 18. Id. at C5:42-45. If the values were
`equal, the system was verified and operation continued. Id. at C5:45-46. Otherwise,
`the system determined that data had been copied from another system and aborted
`operation. id.at C5:45-50.
`III.
`A SUBSTANTIAL NEW ISSUE OF PATENTABILITY EXISTS
`
`A substantial new issue of patentability exists because new prior art has been
`cited that meets the detailed language of each of claims 1-19 of the '941 patent. Exhibit
`I of this request includes claim charts explaining how Schwartz '835 and Lewis '819
`each anticipated or made obvious each of the claims. In addition, Section IV below
`summarizes the reasons for invalidity and elaborating on the relevant claim elements.
`As described above, claim 1 of the '941 is directed to a simple process of
`selecting a program, setting up a verification structure in the BIOS, verifying the
`Independent
`program using the verification structure, and acting on the verification.
`claim 18 is directed to a similar process. The new references create a substantial new
`question of patentability because they (1) disclose the details of each of these
`independent claims, and (2) disclose or render obvious each element if the dependent
`claims.
`The chart below summarizes the grounds for invalidity for each of the claims of
`the '941 patent:
`Claim
`1, 2, 4, 5, 6, 7, 8, 9, 10, 12,
`13, 14, 15, 17, 18, 19
`
`• Anticipated by Schwartz '835
`• Anticipated by Lewis '819
`
`Grounds for Invalidity
`
`3
`
`• Anticipated by Schwartz '835
`• Obvious in view of Schwartz '835
`
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`11
`
`16
`
`• Anticipated by Lewis '819
`Anticipated by Schwartz '835
`Anticipated by Lewis '819
`Obvious in view of Lewis '819
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Obvious in view of Schwartz '835
`Anticipated by Lewis '819
`Obvious in view of Lewis '819
`
`A.
`
`Schwartz '835 Discloses the Details of the Issued Claims and Raises
`a Substantial New Question of Patentability
`
`Schwartz '835 was filed in June 1995, well before the earliest priority date of the
``941 patent. Schwartz '835 disclosed each of the elements of independent claim 1. In
`particular, Schwartz '835 disclosed a system and method for restricting software
`operation within a license for use on a personal computer having an erasable, non-
`volatile memory area of a BIOS. Schwartz '835 at C12:29-40; at C7:48-59; at C8:13-15.
`Schwartz '835 disclosed that the method began when the system selected a program
`residing in memory by running the program.
`Id. at C8:26-31. Schwartz '835 also
`disclosed that the system set up a verification structure in the non-volatile memory area
`of the BIOS by encrypting system data and storing the encrypted information in a flash
`EEPROM.
`Id. at C10:21-54; at C7:48-59. At a later time, the system verified the
`software using the stored verification structure and acted on the program according to
`the verification. Id. at C11:24-40; at C12:8-14. Schwartz '835 disclosed the elements of
`claim 18 for similar reasons.
`In addition, Schwartz '835 anticipated or made obvious each of dependent claims
`2-17 and 19. Thus, Schwartz '835 raises a substantial new question of patentability for
`each of the claims of the '941 patent.
`B.
`Lewis '819 Discloses the Details of the Issued Claims and Raises a
`Substantial New Question of Patentability
`
`Lewis '819 was filed in October 1994 and issued in March 1998 and was,
`therefore, filed and issued before the earliest priority date of the '941 patent. Lewis '819
`also disclosed each of the elements of independent claims 1. Specifically, Lewis '819
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`disclosed a system and method for restricting software operation within a license for use
`on a personal computer having an erasable, non-volatile memory area of a BIOS.
`Lewis '819 at Abstract; at C1:8-16; at C3:6-15; at C4:40-54. Lewis '918 also disclosed
`that the system operated by selecting a program residing in memory. Id. at C4:23-31; at
`C5:10-20; at C5:27-31. The system then set up a verification structure in the non-
`volatile memory of the BIOS by generating an encrypted Message Authentication Code
`(MAC) using a unique chip identifier and other system information. Id. at C2:7-48; at
`C4:55 to C5:9. Lewis '819 further disclosed that the system verified the software using
`the verification structure (the stored encrypted MAC) and acted on the program
`according to the verification. Id. at C5:10-50. Lewis '819 also disclosed the elements of
`claim 18 for similar reasons.
`In addition, Lewis '819 anticipated or made obvious each of dependent claims 2-
`17 and 19. Thus, Lewis '819 raises a substantial new question of patentability for each
`of the claims of the '941 patent.
`IV.
`EXPLANATION OF PERTINENCY AND MANNER OF APPLYING THE CITED
`PRIOR ART
`
`The claim charts in attached Exhibit I show how each of the limitations of claims
`1-19 of the '941 patent are found in the disclosures of the prior art references cited in
`this request. The explanation below summarizes the analysis in those charts. In order
`to simplify the discussion, independent claims 1 and 18 are discussed before the
`remaining dependent claims. In addition, related claims have been combined for clarity.
`A.
`Unpatentability of Claim 1
`
`1.
`
`Anticipation of Claim 1 by Schwar