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 No. IPR2021-00581
`
`Patent No. 6,411,941 B1
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,411,941
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES ............................................................................ 3
`A.
`B.
`
`Real party-in-interest ............................................................................ 3
`
`Related matters ..................................................................................... 3
`
`
`
`Counsel and Service Information ......................................................... 4
`C.
`III. REQUIREMENTS FOR INTER PARTES REVIEW ................................... 5
`A. Ground for Standing ............................................................................. 5
`B. Overview of Challenge and Relief Requested ..................................... 5
`1.
`
`Identification of Prior Art .......................................................... 5
`
`2.
`
`3.
`
`Grounds for Challenge ............................................................... 6
`
`Statutory Grounds of Challenge and Legal Principles ............... 6
`
`C.
`The Board Should Exercise Its Discretion to Institute Review ............ 6
`IV. DESCRIPTION OF TECHNOLOGY .......................................................... 10
`A. Overview of the Technology .............................................................. 10
`
`The Specification and Alleged Invention ................................ 12
`
`B. Overview of the ’941 Patent ............................................................... 12
`1.
`2.
`3.
`The Challenged Claims ............................................................ 21
`V. CLAIM CONSTRUCTION ......................................................................... 21
`
`Prosecution History and Later Proceedings ............................. 17
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 22
`VII. SPECIFIC GROUNDS FOR PETITION ..................................................... 22
`A. Ground I: Claims 1–2, 11, and 13 were obvious over the
`combined teachings of Hellman and Chou ........................................ 22
`1.
`
`Overview of Hellman ............................................................... 22
`
`Overview of Chou .................................................................... 28
`2.
`3. Motivations to Combine Hellman and Chou ........................... 29
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Page
`
`Claim 1 preamble: “A method of restricting software
`operation within a license for use with a computer
`including an erasable, non-volatile memory area of a
`BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:”............................................. 34
`
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 36
`
`Claim 1.b: “using an agent to set up a verification
`structure in the erasable, non-volatile memory of the
`BIOS, the verification structure accommodating data that
`includes at least one license record,” ....................................... 39
`
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 40
`
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 40
`
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 41
`
`10. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 41
`
`11. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 41
`
`B. Ground II: Claims 1–3, 6–14, and 16 were obvious over the
`combined teachings of Hellman, Chou, and Schneck ........................ 42
`1.
`Overview of Schneck ............................................................... 42
`2. Motivations to Combine Hellman, Chou, and Schneck ........... 43
`
`3.
`
`Claim 1. preamble: “A method of restricting software
`operation within a license for use with a computer
`including an erasable, non-volatile memory area of a
`BIOS of the computer, and a volatile memory area; the
`method comprising the steps of:”............................................. 47
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Page
`
`Claim 1.a: “selecting a program residing in the volatile
`memory,” .................................................................................. 47
`
`Claim 1.b: “using an agent to set up a verification
`structure in the erasable, non-volatile memory of the
`BIOS, the verification structure accommodating data that
`includes at least one license record,” ....................................... 48
`
`Claim 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 50
`
`Claim 1.d: “acting on the program according to the
`verification.” ............................................................................ 51
`
`Claim 2: “A method according to claim 1, further
`comprising the steps of: establishing a license
`authentication bureau.” ............................................................ 51
`
`Claim 3 preamble: “A method according to claim 2,
`wherein setting up a verification structure further
`comprising the steps of:” .......................................................... 52
`
`10. Claim 3.a: “establishing, between the computer and the
`bureau, a two-way data-communications linkage;” ................. 52
`
`11. Claim 3.b: “transferring, from the computer to the
`bureau, a request-for-license including an identification
`of the computer and the license-record’s contents from
`the selected program;” ............................................................. 53
`12. Claim 3.c: “forming an encrypted license-record at the
`bureau by encrypting parts of the request-for-license
`using part of the identification as an encryption key;” ............ 56
`13. Claim 3.d: “transferring, from the bureau to the
`computer, the encrypted license-record; and” ......................... 56
`
`14. Claim 3.e: “storing the encrypted license record in the
`erasable non-volatile memory area of the BIOS.” ................... 57
`15. Claim 6: “A method according to claim 1 wherein
`selecting a program includes the steps of: establishing a
`licensed-software-program in the volatile memory of the
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`computer wherein said licensed-software-program
`includes contents used to form the license-record.” ................ 57
`16. Claim 7 preamble: “A method according to claim 6
`wherein using an agent to set up the verification structure
`includes the steps of:” .............................................................. 58
`17. Claim 7.a: “establishing or certifying the existence of a
`pseudo-unique key in a first non-volatile memory area of
`the computer; and” ................................................................... 58
`18. Claim 7.b: “establishing at least one license-record
`location in the first nonvolatile memory area or in the
`erasable, non-volatile memory area of the BIOS.” .................. 58
`19. Claim 8 preamble: “A method according to claim 6
`wherein establishing a license-record includes the steps
`of:” ............................................................................................ 59
`
`20. Claim 8.a: “forming a license-record by encrypting of
`the contents used to form a license-record with other
`predetermined data contents, using the key; and” ................... 59
`21. Claim 8.b: “establishing the encrypted license-record in
`one of the at least one established license-record
`locations.”................................................................................. 59
`22. Claim 9 preamble: “A method according to claim 7
`wherein verifying the program includes the steps of:” ............ 60
`23. Claim 9.a: “encrypting the licensed-software-program's
`license-record contents from the volatile memory area or
`decrypting the license-record in the erasable, non-volatile
`memory area of the BIOS, using the pseudo-unique key;
`and” .......................................................................................... 60
`
`24. Claim 9.b: “comparing the encrypted licenses-software-
`program’s license-record contents with the encrypted
`license-record in the erasable, non-volatile memory area
`of the BIOS, or comparing the license-software-
`program's license-record contents with the decrypted
`license-record in erasable non-volatile memory area of
`
`

`

`TABLE OF CONTENTS
`
`Page
`the BIOS.” ................................................................................ 61
`25. Claim 10: “A method according to claim 9 wherein
`acting on the program includes the step: restricting the
`program's operation with predetermined limitations if the
`comparing yields non-unity or insufficiency.” ........................ 62
`26. Claim 11: “A method according to claim 1 wherein the
`volatile memory is a RAM.” .................................................... 62
`27. Claim 12: “The method of claim 1, wherein a pseudo-
`unique key is stored in the non-volatile memory of the
`BIOS.” ...................................................................................... 63
`28. Claim 13: “The method of claim 1, wherein a unique key
`is stored in a first non-volatile memory area of the
`computer.” ................................................................................ 64
`
`29. Claim 14: “The method according claim 13, wherein the
`step of using the agent to set up the verification record,
`including the license record, includes encrypting a
`license record data in the program using at least the
`unique key.” ............................................................................. 64
`
`30. Claim 16: “The method according to claim 13, wherein
`the step of verifying the program includes a decrypting
`the license record data accommodated in the erasable
`second non-volatile memory area of the BIOS using at
`least the unique key.” ............................................................... 64
`
`VIII. CONCLUSION ............................................................................................. 65
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`EXHIBIT LIST
`
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`
`
`Image File Wrapper of U.S. Patent No. 6,411,941 (“File History”)
`
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`
`
`U.S. Patent No. 4,658,093 (“Hellman”)
`
`
`U.S. Patent No. 5,892,906 (“Chou”)
`
`U.S. Patent No. 5,933,498 (“Schneck”)
`
`
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US), Inc., No.
`
`8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No. 34).
`
`
`In re: Coronavirus Public Emergency, Order Concerning Phased
`
`Reopening of the Court, General Order No. 20-09, United States
`
`District Court for the Central District of California, Aug. 6, 2020.
`
`
`Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns AB, No.
`
`1:19-cv-01703 (D. Del.).
`
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No. 1:19-cv-
`
`01712 (D. Del.).
`
`
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No. 4:11-
`
`cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107).
`
`
`Final Claim Constructions of the Court, Ancora Techs., Inc. v. LG
`
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020) (ECF No.
`
`69).
`
`
`Supplemental Claim Construction Order, Ancora Techs., Inc. v. LG
`
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020) (ECF No.
`
`93).
`
`
`
`
`
`Exhibit List Page 1
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Ex. 1014
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
`LG Electronics, Inc. et al. v. Ancora Techs.
`
`Joint Claim Construction and Prehearing Statement, Ancora Techs.,
`Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192 (C.D. Cal. July 17,
`2020) (ECF No. 49).
`
`Ex. 1015
`
`Declaration of Shahin Nazarian, Ph.D. (“Nazarian Decl.”)
`
`Exhibit List Page 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioners LG
`
`Electronics, Inc. and LG Electronics U.S.A., Inc. request inter partes review
`
`(“IPR”) of U.S. Patent No. 6,411,941 (Ex. 1001). Petitioner is filing a Motion to
`
`Join the IPR in TCT Mobile (US) Inc. v. Ancora Technologies, Inc., IPR2020-
`
`01609 (“TCT IPR Petition”).
`
`I.
`
`INTRODUCTION
`
`The ’941 Patent generally relates to methods for restricting unauthorized
`
`software operation. Specifically, the ’941 Patent claims such a method by storing a
`
`license record in the BIOS memory, which purportedly overcame deficiencies
`
`using a software-based prior art method where a license record was stored in
`
`“volatile memory (e.g., hard disk)” and a hardware-based prior art method. ’941
`
`Patent at 1:10-42. Indeed, storing a license record for a program in the BIOS
`
`memory, and not just any non-volatile memory, is the supposed improvement of
`
`the ‘941 Patent claims over the prior art in prosecution, an ex parte reexamination,
`
`a covered business method review, and two Federal Circuit appeals; even though
`
`those proceedings conceded that a “license record” and “BIOS memory” were both
`
`conventional. But the storage of license records in a BIOS memory was not a
`
`patentable distinction over the prior art as of the priority date in 1998, as
`
`Petitioners demonstrate with the use of three prior art references, Hellman, Chou,
`
`and Schneck.
`
`-1-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`While the ’941 Patent has been litigated in district court and at the Patent
`
`Office in numerous cases, its invalidity based on prior art publications has been
`
`considered in only one of these proceedings. Neither of the Federal Circuit appeals
`
`considered prior art invalidity. One appeal was limited to claim construction
`
`issues, and one appeal was limited to patent eligibility. The covered business
`
`method review was denied institution on the basis that the ’941 Patent was not
`
`eligible for covered business method review. Despite the Patent Owner having
`
`asserted the ’941 Patent against 10 entities over the course of more than 10 years,
`
`the invalidity of the ’941 Patent’s claims has only been considered on the merits in
`
`one instance, an ex parte reexam.
`
`Petitioners submit that, when fully considered on the merits, the prior art
`
`demonstrates that storing information, a license record or otherwise, in the BIOS
`
`memory, that is used in a method to restrict unauthorized operation of software,
`
`was well-known as a way to provide increased protection against tampering with
`
`that information by, e.g., a software hacker. Petitioners demonstrate through the
`
`combinations of Hellman, Chou, and Schneck that a person of ordinary skill in the
`
`art at the time of the invention (POSA) would have found all challenged claims
`
`obvious.
`
`For the reasons described herein, Petitioners request institution of an inter
`
`partes review and cancellation of all challenged claims of the ’941 Patent.
`
`-2-
`
`

`

`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`II. MANDATORY NOTICES
`
`A. Real party-in-interest
`
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively
`
`“Petitioners”) are the real party-in-interest.
`
`B. Related matters
`
`Patent Owner asserts that Petitioners infringe the ’941 Patent in Ancora
`
`Technologies, Inc. v. LG Electronics, Inc., No. 6:19-cv-00384 (W.D. Tex.), which
`
`is consolidated with the same-captioned case No. 1:20-cv-00034 (W.D. Tex.),
`
`filed on June 21, 2019. Petitioners request their Petition be instituted and joined
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) with the
`
`inter partes review proceeding initiated concerning the ’941 patent: TCT Mobile
`
`(US) Inc. v. Ancora Technologies, Inc., IPR2020-01609, which was instituted
`
`February 16, 2021.
`
`Patent Owner has asserted the ’941 Patent against other parties in the
`
`following currently-pending district-court lawsuits: Ancora Technologies, Inc. v.
`
`TCT Mobile (US) Inc., No. 8:19-cv-02192 (C.D. Cal.); Ancora Technologies, Inc.
`
`v. Lenovo Group Limited, No. 1:19-cv-01712 (D. Del.); Ancora Technologies, Inc.
`
`v. Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora Technologies, Inc. v.
`
`Samsung Electronics Co., Ltd., No. 6:19-cv-00385 (W.D. Tex.); Ancora
`
`Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D. Wash.).
`
`-3-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`Samsung Electronics Co., Ltd. et al. filed a petition for inter partes review
`
`against the ’941 Patent on June 25, 2020, IPR2020-01184 (“Samsung IPR
`
`Petition”), which was discretionarily denied on January 5, 2021. Additionally,
`
`HTC Corporation filed a petition for inter partes review against the ’941 Patent
`
`on February 19, 2021, IPR2021-00570 (“HTC IPR Petition”), which is pending
`
`and seeks to join the instituted TCT IPR Petition.
`
`C. Counsel and Service Information
`
`Lead Counsel
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Gregory P. Huh
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`Phone: (214) 651-5533
`Fax: (214) 200-0853
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`
`Phone: (972) 739-6939
`Fax: (214) 200-0853
`gregory.huh.ipr@haynesboone.com
`USPTO Reg. No. 70,480
`
`Please address all correspondence in this proceeding to lead and back-up
`
`counsel. Petitioners consents to service in this proceeding by email at the
`
`addresses above.
`
`-4-
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
`
`A. Ground for Standing
`
`Petitioners certify that the ’941 Patent is available for IPR and that
`
`Petitioners are not barred or estopped from requesting joinder under 37 C.F.R. §
`
`42.122, to an IPR challenging claims of the ’941 Patent on the grounds
`
`presented here.
`
`B. Overview of Challenge and Relief Requested
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioners request
`
`cancellation of claims 1–3, 6–14, and 16 of the ’941 Patent under pre-AIA 35
`
`U.S.C. § 103.
`
`1.
`
`Identification of Prior Art
`
`Petitioners rely upon the references listed in the Table of Exhibits, including:
`
`U.S. Patent No. 4,658,093 (“Hellman” (Ex. 1004)), issued on April 14, 1987
`
`from an application filed on July 11, 1983. Hellman is prior art under pre-AIA 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 5,892,906 (“Chou” (Ex. 1005)), issued on April 6, 1999
`
`from an application filed on July 19, 1996. Chou is prior art under pre-AIA 35
`
`U.S.C. § 102(e).
`
`U.S. Patent No. 5,933,498 (“Schneck” (Ex. 1006)), issued on August 3,
`
`-5-
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`1999 from an application filed on November 5, 1997 and that claims priority to an
`
`application filed on January 11, 1996. Schneck is prior art under pre-AIA 35
`
`U.S.C. § 102(e).
`
`Hellman, Chou, and Scheck were not in front of the Patent Office during the
`
`original examination, the ex parte reexamination, or the covered business method
`
`review of the ’941 Patent.
`
`2. Grounds for Challenge
`
`Ground
`
`Basis
`
`Reference(s)
`
`Challenged
`Claims
`
`1
`2
`
`§ 103
`§ 103
`
`Hellman, Chou
`Hellman, Chou, Schneck
`
`1–2, 11, 13
`1–3, 6–14, and 16
`
`This Petition, supported by the declaration of Dr. Andrew Wolfe (“Wolfe
`
`Decl.” (Ex. 1003)), demonstrates that there is a reasonable likelihood that
`
`Petitioners will prevail with respect to cancellation of at least one challenged
`
`claim. See 35 U.S.C. § 314(a). Additionally, the Petition is supported by the
`
`declaration of Dr. Shahin Nazarian (“Nazarian Decl.” (Ex. 1015)), who has
`
`reviewed the Wolfe Decl. agrees with and has adopted Dr. Wolfe’s analysis.
`
`3.
`
`Statutory Grounds of Challenge and Legal Principles
`
`This Petition requests cancellation of claims 1–3, 6–14, and 16 of the ’941
`
`Patent under pre-AIA 35 U.S.C. § 103.
`
`C.
`
`The Board Should Exercise Its Discretion to Institute Review
`
`As noted above, Petitioners are filing a Motion to Join the IPR in TCT
`
`-6-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`Mobile (US) Inc. v. Ancora Technologies, Inc., IPR2020-01609. In anticipation
`
`that Patent Owner will seek to block this petition for IPR on “discretionary denial”
`
`Petitioners raise the following points. First, as the Board has recognized, joinder
`
`petitions operate as a statutory exception to rules that otherwise would ensure quiet
`
`title to patent owners once district court litigation has progressed.
`
`In Blue Coat Systems, Inc. v. Finjan, Inc., IPR2016-00480, Paper 9 (Jun. 24,
`
`2016), for example, the Board addressed patent owner’s argument that institution
`
`and joinder was inappropriate in that case because the petitioner had already
`
`unsuccessfully presented invalidity defenses in a copending district court action.
`
`Id. at 9. The Board recognized that although concern for “repeated harassment of
`
`patent owners” animates rules such as § 315(b)’s one-year bar, “that concern does
`
`not inform our understanding of whether joinder is proper,” because the district-
`
`court bar expressly “exempts requests for joinder.” Id.; see also Facebook Inc. v.
`
`Windy City Innovations, LLC, 973 F.3d 1321, 1333 (Fed. Cir. 2020) (noting that
`
`joinder under § 315(c) creates “a specific exception to the [district court] time
`
`bar”).
`
`The AIA’s general rule of deferring an IPR in favor of mature civil litigation
`
`thus includes an exception for cases where the Board has already made a finding
`
`that the claims of the patent are reasonably likely to be invalid and another party
`
`files a petition for joinder. Once another PTAB proceeding has raised a serious
`
`-7-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`question as to the patent’s validity, the statute provides that the policy of
`
`protecting the patent owner’s interest in quiet title must cede to the public’s
`
`interest in the “authoritative testing of patent validity” and the “removal of
`
`restrictions on those who would challenge the validity of patents.” Blonder-
`
`Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 344-45 (1971).
`
`The Board’s exercise of its discretionary denial authority must be informed
`
`by this statutory design. The whole point of joinder is to allow institution despite
`
`the progress of a district court case, thereby allowing the agency’s expressed
`
`doubts about a patent’s validity to be resolved by an interested party even if there
`
`is a settlement in the case in which those doubts were first expressed. To apply
`
`discretion to reject a joinder petition because of the progress of district court
`
`litigation would negate the very purpose of joinder and the policies that it
`
`embodies. For this reason, although the USPTO has adopted policies that limit
`
`joinder petitions on the basis of the petitioner’s previous IPR petitions, see Apple
`
`Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020); ZTE Corp. v.
`
`ContentGuard Holdings Inc., Case IPR2013-00454, Paper 12 (Sept. 25, 2013), no
`
`precedential or informative decisions rejects joinder on the basis of the parties’
`
`district court litigation.
`
`Moreover, even if this petition were not a joinder petition, the Board’s
`
`precedential decision in Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 11
`
`-8-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`(March 20, 2020), does not commend discretionary denial in this case. The Fintiv
`
`policy emphasizes “system efficiency” and avoiding the “duplication of efforts”
`
`between the Board and district courts. Id. at 5 & n.7, 6. In this case, the Board has
`
`already reviewed an institution petition and a preliminary response, has analyzed
`
`the patent and the prior art, and has issued a detailed institution decision
`
`concluding that there is a reasonable likelihood that claims of the ’941 patent are
`
`unpatentable. A major portion of a validity review at the PTAB has already been
`
`completed.
`
`On the other hand, the ’941 patent is also the subject a district court action in
`
`which trial is not scheduled to occur until October 17, 2022—see Ancora
`
`Technologies, Inc. v. Sony Mobile Communications AB et al., 1:19-cv-01703-CFC-
`
`SRF (D. Del. Sep. 11, 2019) (docket entry 24)—as well as another district court
`
`action for which no trial date has been set whatsoever. See Ancora Technologies,
`
`Inc. v. Lenovo Group Ltd. et al., 1:19-cv-01712-CFC (D. Del. Sep. 12, 2019). And
`
`data compiled by the Docket Navigator website confirm that the District of
`
`Delaware usually grants stays of litigation that are requested on the basis of
`
`instituted IPRs. See https://compass.docketnavigator.com/patent/court/13/10
`
`(noting that in 2020 the court granted in whole or in part 16 and denied only 11
`
`requests for IPR-based stays).
`
`If the Board were to discretionarily deny institution and joinder in this case,
`
`-9-
`
`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`it would be throwing out all the work that has already been done to reach the TCT
`
`petition institution decision—it would be abandoning a review that is already well
`
`under way and leaving in place a patent that it has already concluded is reasonably
`
`likely invalid. On the other hand, if the Board institutes this petition on the ’941
`
`patent, Petitioners will promptly so inform the defendants in the Delaware cases.
`
`It is thus likely that those defendants would request and receive stays and that, by
`
`completing what it has already started, the Board would eliminate the need for two
`
`future district court litigations. The Board’s Fintiv precedential policy and its
`
`concern for efficiency and avoiding unnecessary proceedings decisively counsels
`
`against exercising discretion to deny institution in this case.
`
`IV. DESCRIPTION OF TECHNOLOGY
`
`A. Overview of the Technology
`
`By the time of the ’941 Patent’s priority date in 1998, the field of software
`
`licensing was well-developed. Wolfe Decl. ¶¶ 31–35. For more than a decade
`
`prior, practitioners in the field had widely recognized the new risks to software
`
`piracy introduced by the transformations to digital media. Id.
`
`Many entities recognized that one such risk was “copy protection” or
`
`“secondary distribution.” Id. This referred to the situation where a user received a
`
`valid license for a software program, but the user then duplicated the program
`
`and/or the license so as to use it in an unauthorized fashion for more uses, on more
`
`computers, etc. Id. This problem was of particular interest to practitioners because
`
`-10-
`
`

`

`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`it required the software owner to provide enough trust to the user to perform at
`
`least one authorized use, as opposed to providing no trust or unlimited trust. Id.
`
`While many solutions were developed, a common theme was to use some form of
`
`encryption to reduce unauthorized secondary distribution of the software program.
`
`Id.
`
`Similarly, by 1998, the field of computer BIOS was well-developed.
`
`Wolfe Decl. ¶¶ 36–42. Nearly all consumer end user devices contained a BIOS
`
`program that was used to start up the device at power-on time. Id. Early personal
`
`computers tended to store BIOS programs in separate, true ROM (read only
`
`memory) memory module, i.e., memory that could not be re-written in the field.
`
`Id. By the 1990s, it was more common to store BIOS programs in “ROM” that
`
`could actually be rewritten in some form. Id. Early forms of this rewritable ROM
`
`often required physically accessing the memory chip with a special device. Id.
`
`By the ’941 Patent’s priority date in 1998, electrically-erasable
`
`programmable read-only memory (EEPROM) was a popular medium for BIOS
`
`memory. Id. EEPROM chips had the benefit of being re-writable by software
`
`without the need to remove the chip from the computer. Id. This aspect of
`
`EEPROM was considered beneficial because it became common prior to the ’941
`
`priority date in 1998 for device manufacturers to provide updates to BIOS while
`
`the devices were in the field. Id. EEPROM allowed that functionality. Id.
`
`-11-
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`
`B. Overview of the ’941 Patent
`
`The ’941 Patent issued from U.S. Patent Application No. 09/164,777, filed
`
`on October 1, 1998. It claims priority to Israeli Patent Application 124571, which
`
`was filed on May 21, 1998. ’941 Patent, Cover Page. Therefore, the priority date
`
`of the ’941 Patent is no earlier than May 21, 1998.
`
`1.
`
`The Specification and Alleged Invention
`
`The ’941 Patent invention is directed to “restricting an unauthorized
`
`software program’s operation.” ’941 Patent at 1:6–8. The ’941 Patent recognizes
`
`that it was known in the field to store a “license signature” for a program in a
`
`computer’s “volatile memory (e.g. hard disk).”1 Id. at 1:19–21. The ’941 Patent
`
`alleges that such techniques were “appropriate for restricting honest software
`
`users,” but they were “vulnerable to attack at the hands of skilled system’s
`
`programmers (e.g. ‘hackers’).” Id. at 1:21–24.
`
`The ’941 Patent proposes to solve this problem based on “the use of a key
`
`and of a record, which have been written into the non-volatile memory of a
`
`computer.” Id. at 1:38–43. The “key” is stored “during manufacture” in a “ROM
`
`1 Despite this contradictory example (i.e., that a hard disk is exemplary of volatile
`memory), the Federal Circuit held that “volatile memory” has its ordinary
`meaning, Ancora Technologies, Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed. Cir.
`2014), such as “memory whose data is not maintained when the power is
`removed,” id. at 737.
`
`-12-
`
`

`

`
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Pat. No. 6,411,941
` LG Electronics, Inc. et al. v. Ancora Techs.
`
`section” of a “BIOS module,” and it “constitutes, effectively, a unique
`
`identification code for the host computer.” Id. at 1:44–52. The “license record” is
`
`stored in “another (second) non-volatile section of the BIOS, e.g. E2PROM (or the
`
`ROM).”2 Id.at 1:59–2:1. The ’941 Patent distinguishes the storage location of the
`
`key and the license record: “It should be noted that unlike the first non-volatile
`
`section, the data in the second non-volatile memory may optionally be erased or
`
`modified (using E2PROM manipulation commands), so as to enable to add, modify
`
`or