Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 1 of 21 Page ID #:1660
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`CIVIL MINUTES - GENERAL
`SACV 19-2192-GW-ADSx
`Ancora Technologies, Inc v. TCT Mobile (US), Inc., et al.
`
`Case No.
`Title
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`Date November 12, 2020
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`Terri A. Hourigan
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`Marc Lorelli
`Kyle R. Canavera
`John P. Rondini
`John P. Schnurer
`PROCEEDINGS:
`TELEPHONIC MARKMAN HEARING
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`The Court’s Final Ruling on Claim Construction (Markman) Hearing is circulated and attached hereto.
`Court and counsel confer. For reasons stated on the record, the hearing is continued to November 19,
`2020 at 8:30 a.m. The parties are to meet and confer, and attempt to resolve this matter. A joint status
`report is to be filed by noon on November 17, 2020.
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`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`JG
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`Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 2 of 21 Page ID #:1661
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`Ancora Techs., Inc. v. TCT Mobile (US) Inc. et al.; Case No. 8:19-cv-02192-GW-(ASx) (Lead Case);
`Case No. 2:20-cv-01252-GW-(ASx) (Consolidated Case)
`Final Ruling on Claim Construction (Markman) Hearing
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`I.
`
`Introduction
`Plaintiff Ancora Techs., Inc. (“Plaintiff” or “Ancora”) filed suit against TCL Corp., TCL
`Commc’n Ltd., TCL Commc’n Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd. on August
`27, 2019, alleging infringement of U.S. Patent No. 6,411,941 (“the ’941 Patent”). Ancora Techs.,
`Inc. v. TCL Corp. et al., Case No. 2:20-cv-01252-GW-(ASx) (“Consolidated Case”), Docket No.
`1; see also Docket No. 12 (Consolidated Case Amended Complaint).
`On November 12, 2019, TCT Mobile (US) Inc. and Huizhou TCL Mobile Commc’n Co.,
`Ltd., separately filed suit against Plaintiff, seeking declaratory judgement of non-infringement of
`the ’941 Patent.
` TCT Mobile (US) Inc. et al. v. Ancora Techs., Inc., Case No.
`8:19-cv-02192-GW-(ASx) (“Lead Case”), Docket No. 1. The two actions have been consolidated
`so that Plaintiff now accuses TCT Mobile (US) Inc., Huizhou TCL Mobile Commc’n Co., Ltd.,
`Shenzhen TCL Creative Cloud Tech. Co., Ltd., TCL Corp., TCL Commc’n Ltd., TCL Commc’n
`Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd., TCT Mobile (US) Holdings Inc., TCT
`Mobile, Inc., TCT Mobile Int’l Ltd. (collectively, “Defendant” or “TCL”) of infringing the
`’941 Patent. Docket No. 29; see also Docket No. 23 (stipulation to realign parties); Docket No. 24
`(First Amended Complaint); Docket No. 44 (Second Amended Complaint).1
`Now pending are some of the parties’ claim construction disputes. The parties have
`submitted a Joint Claim Construction and Prehearing Statement. See Docket No. 49. The parties
`have also filed various claim construction briefs and supporting documents:
` Plaintiff Ancora’s Opening Claim Construction Brief (Docket No. 52); Defendant
`TCL’s Opening Claim Construction Brief (Docket No. 53)
` Plaintiff Ancora’s Responsive Claim Construction Brief (Docket No. 54); Defendant
`TCL’s Responsive Claim Construction Brief (Docket No. 55)
`The Court construes the disputed terms as stated herein.
`Background
`For purposes of the parties’ claim construction disputes, the parties request construction of
`
`II.
`
`1 Citations are to the Lead Case unless otherwise noted.
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`seven terms in the asserted claims of the ’941 Patent, titled “Method of Restricting Software
`Operation Within a License Limitation.” The ’941 Patent issued on June 25, 2002. The ’941
`Patent relates to “a method and system of identifying and restricting an unauthorized software
`program's operation.” ’941 Patent at 1:6-8.
`Claim 1 of the ’941 Patent recites:
`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 verification structure accommodating data
`that includes at least one license record,
`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.
`’941 Patent, Claim 1.
`III.
`Legal Standard
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It is “a question of law in the
`way that we treat document construction as a question of law,” with subsidiary fact-finding
`reviewed for clear error to Fed. R. Civ. P. 52(a)(6). Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831, 837-40 (2015). The claim language itself is the best guide to the meaning of a
`claim term. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). This is because
`the claims define the scope of the claimed invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312
`(Fed. Cir. 2005). But a “person of ordinary skill in the art is deemed to read the claim term not
`only in the context of the particular claim in which the disputed term appears, but in the context of
`the entire patent.” Id. at 1313. Thus, claims “must be read in view of the specification,” which is
`“always highly relevant to the claim construction analysis.” Phillips, 415 F.3d at 1315 (internal
`quotations omitted).
`Although claims are read in light of the specification, limitations from the specification
`must not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288
`(Fed. Cir. 2009). “[T]he line between construing terms and importing limitations can be discerned
`with reasonable certainty and predictability if the court’s focus remains on understanding how a
`person of ordinary skill in the art would understand the claim terms.” Phillips, 415 F.3d at 1323.
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`The prosecution history may lack the clarity of the specification, but it is “another
`established source of intrinsic evidence.” Vederi, 744 F.3d at 1382. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the patent.”
`Phillips, 415 F.3d at 1317 (citations omitted). “Furthermore, like the specification, the prosecution
`history was created by the patentee in attempting to explain and obtain the patent.” Id. “Yet
`because the prosecution history represents an ongoing negotiation between the PTO and the
`applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Id.
`Claim construction usually involves resolving disputes about the “ordinary and customary
`meaning” that the words of the claim would have had “to a person of ordinary skill in the art in
`question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal quotations and
`citations omitted). But in some cases, claim terms will not be given their ordinary meaning because
`the specification defines the term to mean something else. “[A] claim term may be clearly
`redefined without an explicit statement of redefinition,” so long as a person of skill in the art can
`ascertain the definition by a reading of the patent documents. Id. at 1320; see also Trustees of
`Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016).
`Where the patent itself does not make clear the meaning of a claim term, courts may look
`to “those sources available to the public that show what a person of skill in the art would have
`understood disputed claim language to mean,” including the prosecution history and “extrinsic
`evidence concerning relevant scientific principles, the meaning of technical terms, and the state of
`the art.” Phillips, 415 F.3d at 1314 (internal quotations omitted). Sometimes, the use of “technical
`words or phrases not commonly understood” may give rise to a factual dispute, the determination
`of which will precede the ultimate legal question of the significance of the facts to the construction
`“in the context of the specific patent claim under review.” Teva, 135 S. Ct. at 841, 849. “In some
`cases, the ordinary meaning of claim language as understood by a person of skill in the art may be
`readily apparent even to lay judges, and claim construction in such cases involves little more than
`the application of the widely accepted meaning of commonly understood words.” Phillips,
`415 F.3d at 1314. “In such circumstances, general purpose dictionaries may be helpful.” Id.
`IV.
`Discussion
`A. Agreed Claim Terms
`The parties have agreed to constructions for the following claim terms (see Docket
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`No. 49):
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`Asserted Claim s
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`“non-volatile memory area of
`the BIOS”
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`“BIOS”
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`
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`Parties’ . _reed Claim Construction
`“memory area of BIOS whose
`data is maintained when the
`
`power is removed”
`
`An acronym for Basic
`Input/Output System. It is the
`set of essential startup
`operations that run when a
`computer is turned on, which
`test hardware, starts the
`operating system, and support
`the transfer of data among
`hardware devices
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`B. Disputed Claim Terms
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`1. “volatile memog” (Claim 1!
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`“memory area whose data is not maintained
`or becomes inaccessible when the power is
`
`“memory whose data is not maintained when the
`power is removed”
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`Plaintiff’s Pro nosed Construction
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`Defendant’s Pro . osed Construction
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`removed”
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`The parties agree that “Volatile memory” is “memory whose data is not maintained when
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`the power is removed.” Docket Nos. 52 at 7; 53 at 21. The only dispute is whether “volatile
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`memory” also includes “memory whose data becomes inaccessible afier the power is removed.”
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`As Defendant highlights, Plaintiff has accepted Defendant’s proposed construction on two
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`separate occasions.
`
`See Ancora Techs.,
`
`Inc.
`
`v. Apple Inc., No.
`
`ll-cv—06357—YGR,
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`2012 WL 6738761, at *4 (ND. Cal. Dec. 31, 2012) (“Apple 1”); Docket No. 53-10 at 1 (dated
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`July 29, 2019). Plaintiff now seeks to broaden this construction based on the Federal Circuit’s
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`decision inAncora v. Apple, Inc, 744 F.3d 732 (Fed. Cir. 2014) (“Apple II”).
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`In Apple II, the Federal Circuit affirmed the lower court’s holding that the term ‘fiiolatile
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`memory” was not indefinite despite the ’94] Patent specification stating that a hard disk is “volatile
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`memory.” Id. at 737-39; see also ’94] Patent at 1:21; 3:9; 4:53. The Circuit acknowledged that a
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`hard disk is not normally considered a “volatile memory,” i.e. “a hard disk maintains data when
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`the power is removed.” Id. at 738. But the Circuit also agreed that “it is well known that a
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`computer’s hard disk is routinely used as ‘Virtual’ memory to provide temporary storage when
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`there is insufficient RAM to complete an operation, in which case (it is undisputed) the data
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`become inaccessible through the usual means once power is removed (even if the data can still be
`
`found on the hard disk by more sophisticated means).” Id. (internal citations omitted). Based on
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`this, the Federal Circuit agreed that the term ‘filolatile memory” was not indefinite.
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`Plaintiff argues that the term “volatile memory” should also include “memory whose data
`
`becomes inaccessible after the power is removed” due to the above language. Defendant does not
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`seem to dispute that the Federal Circuit’s decision provided an exception to its construction, but
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`instead argues that Plaintist construction is incomplete. See Docket Nos. 53 at 22-23; 55 at 21.
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`The Western District of Texas’s construction of this term is instructive. Having considered
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`similar arguments, that court construed the term “volatile memory” to mean “memory whose data
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`is not maintained when the power is removed,” but with one exception. See Docket No. 52-4 at 2.
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`In a footnote “not for the jury,” the court added: “For the comer case where the hard disk drive is
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`used as virtual RAM, the data is not accessible by normal means after the power is removed.” Id.
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`This strikes the correct balance.
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`Accordingly, this Court construes the term ‘firolatile memory” to mean “memory whose
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`data is not maintained when the power is removed,” with the exception that ‘Where the hard disk
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`drive is used as virtual RAM, the data is not accessible by normal means after the power is
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`removed.”
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`2. “selecting a program residing in the volatile memog” (Claim 11
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`Plaintiff’s Pro I osed Construction
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`Defendant’s Pro n osed Construction Plain and ordinary meaning
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`“accessing a program to be verified in the volatile
`memo ”
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`The parties’ dispute is unclear. Plaintiff spends its briefs arguing that replacing the word
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`“selecting” with “accessing” adds ambiguity and reads out embodiments. See Docket Nos. 52 at
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`8—11; 54 at 16. Defendant states in its responsive brief, however, that the significance of its
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`construction is not in the difference between the words “selecting” and “accessing,” but that “the
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`program is present in the volatile memory — by accessing, selecting, or otherwise in the “selecting
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`.
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`. .” step - prior to being verified in the “Verifying .
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`. .” step.” See Docket No. 54 at 19.2 Because
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`2 To the extent that Defendant argues that the “selecting” step must come before the ‘firerifying” step. the Court notes
`that the Western District of Texas has found that the “selecting” step may be performed at any time. See Docket No.
`52-5 at 7-10. 37. Given that the parties do not appear to dispute the order of the steps. however. the Court does not
`decide this issue.
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`the parties’ dispute is unclear, the Court declines to construe this term.
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`3. “set 11 a verification structure” Claim 1
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`Plaintiffs Pro nosed Construction
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`Defendant’s Pro n osed Construction
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`the com-uter”
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`Plain and ordinary meaning
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`“store information encrypted with a key unique to
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`Claim 1 recites “using an agent to set up a verification structure in the erasable, non-
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`volatile memory of the BIOS, the verification structure accommodating data that includes at
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`least one license recor ,” and ‘filerifying the program using at least the verification structure from
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`the erasable non-volatile memory of the BIOS.” ’94] Patent, Claim 1 (emphasis added). The
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`parties dispute whether setting up this verification structure requires encrypting information with
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`a key unique to the computer.
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`Specifically, Defendant claims that
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`the specification and
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`prosecution history show a clear disavowal of claim scope. See Docket No. 53 at 15.
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`Starting with the specification, Defendants argues that the “Summary of the Invention”
`
`states that the invention requires the use of a key, which states:
`
`The present invention relates to a method of restricting software operation
`within a license limitation. This method strongly relies on the use ofa key
`and ofa record, which have been written into the non—volatile memory of a
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`computer.
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`’94] Patent, 1:38—43 (emphasis added); see also Docket No. 53 at 15. “When a patent thus
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`describes the features of the ‘present invention’ as a whole, this description limits the scope of the
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`invention.” Regents of Univ. ofMinnesota v. AGA Med. Corp, 717 F.3d 929, 936 (Fed. Cir. 2013).
`
`This description of the present invention matches the language recited in Claim 1, which states
`
`that “the verification structure accommodate[es] data that includes at least one license record.”
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`’94] Patent, Claim 1. Further, the specification states that “[t]hepresent invention also relates to
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`a non-volatile memory media used as a BIOS of a computer, for restricting software operation
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`within a license limitation, wherein a pseudo—unique key is established.” ’94] Patent at 4:55-58
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`(emphasis added). But that is where the description of the present invention ends.
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`The specification does not support Defendant’s construction. As both parties acknowledge,
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`the rest of the specification describes “non-limiting example[s]” or “operations performed
`
`according to one embodiment of the invention.” See Docket No. 54 at 10; see also Docket No. 52
`
`at 15 (“While most of the ’941 Patent disclosure is phrased in the language of ‘non-limiting
`
`examples’ and ‘embodiments,’ the [Summary of the Invention] is not”). Defendant argues that
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`these examples are limiting as they provide “context for the characterization of the invention as a
`whole,” and because “the specification never discloses any embodiment where the license record
`in the verification structure is not encrypted using the unique key.” See Docket No. 53 at 15-16.
`But as Plaintiff notes, claim terms should not be limited just because the specification discloses a
`single embodiment. See Docket No. 54 at 10 (citing Phillips, 415 F.3d at 1323).
`Further, Claim 1 recites that the “verification structure” is set up “in the erasable, non-
`volatile memory of the BIOS.” ’941 Patent, Claim 1. Claim 7 recites that the “set[ting] up a
`verification structure” step of Claim 1 includes establishing (or certifying the existence of) “a
`pseudo-unique key in a first non-volatile memory area of the computer; and establishing at least
`one license-record location in the first nonvolatile memory area or in the erasable, non-volatile
`memory area of the BIOS.” ’941 Patent, Claim 7. Similarly, the specification states that setting
`up the verification structure only requires establishing (or certifying the existence of) a key and at
`least one license-record location in the non-volatile memory:
`Setting up (18) the verification structure includes the steps of: establishing or
`certifying the existence of a pseudo-unique key in the first non-volatile memory
`area; and establishing at least one license-record location in the first or the second
`nonvolatile memory area.
`’941 Patent at 6:18-22. These references to the “set[ting] up a verification structure” step without
`mentioning encryption suggest that encryption is not required.3
`Defendant asserts that the description of the “[s]etting up (18) the verification structure” in
`the specification is followed by an explanation that the “establishing a license-record” step
`includes “forming a license-record by encrypting of the contents used to form a license-record …
`using the key.” See Docket No. 55 at 12-13 (citing ’941 Patent at 6:23-26). The specification
`states that the “establishing a license-record” step further includes “establishing the encrypted
`license-record in one of the at least one established license-record locations.” ’941 Patent at
`6:26-28 (emphasis added). As Defendant admits, however, “the cited passage describes sub-steps
`that can be included in the step of ‘[s]etting up (18) the verification structure.’” See Docket 55 at
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`3 The specification also discloses that the “license record may be held in either encrypted or explicit form.” See Docket
`No. 52 at 11 (citing ’941 Patent at 1:55). As Defendant points out, however, the next paragraph shows that this excerpt
`describes the state of the license-record before the verification structure is set in the BIOS. See Docket No. 55 at 13-
`14 (citing ’941 Patent at 1:59-62 (“Now, there commences an initial license establishment procedure, where a
`verification structure is set in the BIOS so as to indicate that the specified program is licensed to run on the specified
`computer.”)). But later the specification states that “[a]ny component [of a license-record] may, if desired, be
`encrypted.” ’941 Patent at 5:39.
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`12. Claim 8 already includes both of these-sub-steps. See ’941 Patent, Claim 8. Defendant has
`not shown that the “set[ting] up a verification structure” step of Claim 1 requires storing encrypted
`information.
`The prosecution history does not support Defendant’s construction either. The applicant’s
`arguments during prosecution suggest that setting up a verification structure requires the use of a
`key. The applicant stated that “the client system ID of Misra, is similar to the pseudo-unique key
`recited in claims 1 and 20.’” See Docket No. 52-3 at ANCC000151 (emphasis in original). As
`Defendant argues, then-pending Claim 1 did not explicitly recite a “pseudo-unique key,”
`suggesting that the term “verification structure” includes a pseudo-unique key. See Docket No. 53
`at 16-17; Docket No. 52-3 at ANCC000130. Further, the applicant argued that “[i]n the present
`method, the verification structure is formed by using a unique key for each computer and license
`record information in the software.” Docket No. 52-3 at ANCC000095. Although these statements
`may not amount to an “explicit disclaimer of subject matter sufficient to vary the scope of the
`claim,” they are still helpful in determining the ordinary meaning of the term “verification
`structure” within the relevant art. See Novartis Pharm., Corp. v. Eon Labs Mfg. Inc.,
`363 F.3d 1306, 1311 (Fed. Cir. 2004).4
`Applicant’s remarks on encryption, however, are ambiguous at best. The applicant argued
`that “[t]he license ID of Misra is similar to the verification structure and license information recited
`in claims 1 and 20, respectively.” Docket No. 52-3 at ANCC000151 (emphasis in original).
`According to Defendant, Misra discloses cryptographically signing the license ID with “a signing
`key,” showing that setting up the verification structure requires encryption. See Docket No. 53 at
`17 (citing Docket No. 53-9 at 10:60-67). But this is not included in the applicant’s remarks. At
`most, the applicant argued that the license ID “may be a digital certificate.” Docket No. 52-3 at
`ANCC000151. This is not enough to limit the term “set[ting] up a verification structure.”
`Finally, “set[ting] up a verification structure” does not require a key “unique to the
`computer.” As stated throughout, the key may be “pseudo-unique,” which the specification states
`“may relate to a random bit string (or to an assigned bit string) of sufficient length such that: there
`is an acceptably low probability of a successful unauthorized transfer of licensed software between
`
`4 Plaintiff’s argument that the prosecution history describes embodiments without using a key is unpersuasive. See
`Docket No. 54 at 12 (citing Docket No. 52-3 at ANCC000092). Applicant’s statement that “[i]n a preferred
`embodiment, a key resides in a first non-volatile part of a computer’s memory,” describes one possible location for
`the key, not that the key is optional.
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`two computers, where the first volatile memories of these two computers have the same key.”
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`’94] Patent at 4: 13—18. Thus, the key may be “pseudo—unique” rather than “unique.”
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`Accordingly, the Court does not construe this term at this time.
`
`4. “license recor ” Clairnl
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`Plaintiff’s Pro nosed Construction
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`Defendant’ Pro » osed Construction
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`nro u am”
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`“a record from a licensed program with
`information for verifying that licensed
`
`“information indicating a right to use the
`program”
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`The parties dispute whether a license record requires “information indicating a right to use
`
`the program” or just information for verifying the program. Plaintiff argues that two other courts
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`have already adopted Plaintiff’s construction or a substantially similar one. See Docket No. 52 at
`
`13. The Court agrees with those courts.
`
`The specification shows that a license-record is any information from a licensed program
`
`used by the verification structure to verify the program. The specification states that a
`
`license-record “consists of author name, program name and number of licensed users (for
`
`network),” and is associated with “each application program that is to be licensed to run on the
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`specified computer.” ’94] Patent at 1:53—57. The license record may be formed from fields or
`
`contents of the licensed program. See id. at 5:46—51; 627-10. The specification provides the
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`following examples of contents used to form the license—record: “terms,
`
`identifications,
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`specifications, or limitations related to the manufacturer of a software product, the distributor of a
`
`software product, the purchaser of a software product, a licensor, a licensee, items of computer
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`hardware or components thereof, or to other terms and conditions related to the aforesaid.” Id. at
`
`6211-17. Further, “the license record is not necessarily bound to continuous fields,” and the
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`license-record contents may be “centralized or decentralized” or “embedded in various locations
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`in the application.” Id. at 5:35-39; 6:11. Thus, the information itself does not need to indicate
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`anything so long as it is capable of being used to verify the program.
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`Figure l and its description confirm that the license-record is the information from the
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`program used to verify the program. Describing Figure 1, the specification states that “[t]he second
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`non-volatile memory includes a license-record—area (9) e.g. which contains at least one encrypted
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`license-record (e.g. three records 10—12),” while “[t]he volatile memory accommodates a license
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`program (16) having license record fields (13-15) appended thereto.” ’94] Patent at 5:26-30. The
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`license-record fields shown in Figure l are found at various locations in the license program. See
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`Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 11 of 21 Page ID #:1670
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`id., Fig. 1 (reproduced below). The specification provides the following examples of the
`license-record fields: “Application names (e.g. Lotus 123), Vendor name (Lotus inc.), and number
`of licensed copies (1 for stand alone usage, >1 for number of licensed users for a network
`application).” Id. at 5:30-34. The description and figure show that the license-record is comprised
`of assorted information from the program without necessarily indicating a right to use the program.
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`Defendant has not shown that the plain and ordinary meaning of a license-record to one of
`ordinary skill in the art when viewed in light of the specification is limited to information indicating
`a “right to use.” The specification states consistently that the program is licensed “to run” and
`suggests that the terms “licensed” and “verified” are synonymous. See ’941 Patent at 1:54-55
`(“each application program that is to be licensed to run on the specified computer”); 1:61-62 (“the
`specified program is licensed to run on the specified computer”); 2:20 (“the program is verified to
`run on the computer”); 2:28 (“attempt to run a program at an unlicensed site”); 2:30 (“verified to
`run”); 2:36 (“Suppose now that a hacker attempts to run…”). Defendant also relies on the
`applicant’s remarks about the “license ID” of the prior art made during prosecution of the
`’941 Patent. See Docket No. 53 at 19. The applicant stated that the license ID “may be a digital
`certificate indicating the right to use” and “is similar to the verification structure and license
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`information.” See Docket No. 52-3 at ANC000151 (emphasis added). These statements do not
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`change the scope of the term “license—record” when read in light of the specification.
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`Defendant’s issues with Plaintiff's construction are also unfounded. Defendant’s argument
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`that Plaintiff 5 construction is dissociated from the plain meaning of the term “license” is based on
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`Defendant’s overly narrow construction ofthe term “license.” See Docket No. 53 at 20. Defendant
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`also complains that Plaintiff’5 construction does not provide what the licensed program is verified
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`to do. See Docket No. 55 at 18. A person of ordinary skill in the art would be able to understand
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`the verification process from reading the specification, though.
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`Finally, Defendant argued at
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`the hearing that
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`there is a distinction between the
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`license-record in the erasable, non—volatile memory and the license-record in the volatile memory.
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`See, e.g. , Docket No. 61 at 5:16-72. Specifically, Defendant argued that the license record recited
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`in Claim 1 is stored in the erasable, non—volatile memory of the BIOS, which includes different
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`information than the license record stored in the volatile memory. See id. at 7:7-923. But as
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`Defendant admitted, the ’94] Patent discloses that a program is verified when the contents of the
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`two license records match. See id. at 9:15-23 (explaining that the way verification “is done is by
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`pulling up the record
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`and doing a comparison, and saying no, I don’t see this,
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`you are not
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`authorized .. . or there is a match, and that indicates that you are licensed to operate this program”).
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`For instance, the ’94] Patent describes as an example a situation where a hacker attempts
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`to run a specified program in a second computer. ’94] Patent at 2: 10-59. The verification structure
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`first establishes a license record encrypted with a first computer’s identification code (kl) that was
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`stored in the first computer’s erasable, non-volatile memory, i.e. (LR)k1.
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`Id. The verification
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`structure then compares that encrypted license record with the license record encrypted with a
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`second identification code (k2) generated from the volatile memory, i.e. (LR)k2. Id. As shown in
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`this example, the license record (LR) is identical; only the identification code is different. Thus,
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`according to this example, the license record itself does not indicate a right to use a program, but
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`rather has information used to verify the program in combination with the identification code.
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`Accordingly, the Court construes the term “license—record” to mean “a record from a
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`licensed program with information for verifying that licensed program.”
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`5. “memo of the BIOS” Claim]
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`Defendant’s Pro I osed Construction Plain and ordin meanin-
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`Plaintiff’s Pro . osed Construction
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`“a memo
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`that:
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`i stores the BIOS;
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`ii
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`is not
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`Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 13 of 21 Page ID #:1672
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`recognized by an operating system as a storage
`device; and (iii) does not have a file system”
`Defendant asks that the term “memory of the BIOS” be limited based on the doctrine of
`prosecution disclaimer. See Docket No. 53 at 10. The Court finds that prosecution disclaimer
`does not apply.
`Defendant relies on arguments the applicant made during the prosecution of the ’941 Patent
`to overcome a rejection under 35 U.S.C. § 103 in light of two prior art references, i.e. Misra and
`Ewertz. See Docket No. 54 at 12-13. Produced below is the relevant part of the file history:
`Moreover, the present invention proceeds against conventional wisdom in the art.
`Using BIOS to store application data such as that stored in Misra’s local cache for
`licenses is not obvious. The BIOS area is not considered a storage area for
`computer applications. An ordinary skilled artisan would not consider the BIOS a
`storage medium to preserve application data for at least two reasons.
`First, OS does not support this functionality and is not recognized as a hardware
`device like other peripherals. Every