Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page1 of 74
`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Pagel of 74
`
`
`
`
`
`
`EXHIBIT B
`
`EXHIBIT B
`
`IPR2021-00663
`
`ANCORA EX2004
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page2 of 74
`
`
`
`
`
`MICHAEL A. JACOBS (CA SBN 111664)
`mjacobs@mofo.com
`RICHARD S.J. HUNG (CA SBN 197425)
`rhung@mofo.com
`FRANCIS C. HO (CA SBN 247426)
`fho@mofo.com
`ERIC W. OW (CA SBN 252921)
`eow@mofo.com
`MORRISON & FOERSTER, LLP
`425 Market Street
`San Francisco, CA 94105-2482
`Telephone: (415) 268-7000
`Facsimile: (415) 268-7522
`
`BITA RAHEBI (CA SBN 209351)
`brahebi@mofo.com
`MORRISON & FOERSTER LLP
`555 West Fifth Street, Suite 3500
`Los Angeles, CA 90013-1024
`Telephone: (213) 892-5200
`Facsimile: (213) 892-5454
`
`Attorneys for Defendant Apple Inc.
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`Plaintiff,
`
`v.
`APPLE INC.,
`
`Case No. 2:10-cv-10045-AG-MLG
`APPLE INC.’S N.D. CAL. PATENT
`L.R. 3-3 DISCLOSURES
`
`Defendant.
`
`Counterclaimant,
`
`APPLE INC.,
`
`
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`
`
`
`Counterdefendant.
`
`
`sf-3054790
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page3 of 74
`
`
`
`Pursuant to the Court’s August 29, 2011 Order Re: Stipulated Trial Schedule
`
`(D.I. 40), Apple Inc. hereby provides its N.D. Cal. Patent L.R. 3-3 Disclosures
`(“Invalidity Contentions”) for U.S. Patent No. 6,411,941.
`By providing these Invalidity Contentions, Apple does not waive any
`applicable privilege or immunity, including the attorney-client privilege or work
`product doctrine. Apple predicates the Invalidity Contentions, in part, on the claim
`constructions suggested by Ancora’s September 14, 2011 Discovery Order
`Disclosures and Disclosures Pursuant to Patent Rules 3-1 and 3-2 (“Infringement
`Contentions”). Accordingly, these Invalidity Contentions should not be read as
`representing or otherwise reflecting Apple’s final positions regarding the proper
`interpretation of the claims. Ancora has asserted in its Infringement Contentions
`that Apple’s iPhone, iPod Touch, iPad and Apple TV infringe Claims 1-3 and 5-17
`of the ’941 patent (“Asserted Claims”). These Invalidity Contentions address only
`the Asserted Claims.
`Apple bases these Invalidity Contentions on information reasonably available
`to it at this time. The significant deficiencies in Ancora’s Infringement Contentions
`and other discovery responses have made it difficult for Apple to understand
`Ancora’s infringement and claim construction positions, and those positions
`necessarily inform Apple’s invalidity positions.1 Apple’s investigation of Ancora’s
`claims and the prior art is ongoing. Apple incorporates by reference the
`Preliminary Invalidity Contentions of Microsoft and PC Company Defendants in
`Ancora Technologies, Inc. v. Toshiba Am. Info. Sys., Inc., No. 2:09-cv-00270-MJP
`(W.D. Wash.), attached as Exhibit A. Apple reserves the right to supplement or
`amend these Invalidity Contentions in the future, particularly in response to any
`supplementation by Ancora of its infringement contentions to clarify its theories.
`
`
`1 See October 26, 2011 letter to Ancora’s counsel outlining deficiencies.
`
`
`sf-3054790
`
`1
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page4 of 74
`
`
`
`Patent L.R. 3-3(a)
`A.
`Apple identifies prior art publications and patents that anticipate or render
`
`obvious one or more of the limitations of the Asserted Claims in Table A below.
`
` Author
`White et al.
`
`Publication Date
`June 1990
`
`May 4, 1991
`
`May 1994
`
`Nov. 1994
`
`July 1995
`
`1996
`
`March 6, 1996
`
`1997
`
`Non-Patent Publication
`ABYSS: A Trusted Architecture for
`Software Protection, IEEE Transactions
`on Software Engineering, Vol. 16, No. 6,
`pp. 38-51 (“White 1990”) (Ex. 1)
`Dyad: A System for Using Physically
`Secure Coprocessors, CMU-CS-94-140R,
`Carnegie Mellon University (“Tygar
`1991”) (Ex. 2)
`Using Secure Coprocessors, Carnegie
`Mellon University, CMU-CS-94-149
`(“Yee 1994”) (Ex. 3)
`BITS: A Smartcard Protected Operating
`System, Communications of the ACM,
`Vol. 37, No. 11, pp. 68-70; 94 (“Clark
`1994”) (Ex. 4)
`Secure Coprocessors in Electronic
`Commerce Applications, Proceedings of
`the 1st USENIX Workshop on Electronic
`Commerce, pp. 155-170 (“Yee 1995”)
`(Ex. 5)
`A Secure and Reliable Bootstrap
`Architecture, Dept. of Comp. & Info. Sci.
`Tech. Reports, U. Penn. (“Arbaugh 1996”)
`(Ex. 6)
`Desktop Management BIOS Specification,
`Version 2.0 (“DMI BIOS Specification”)
`(Ex. 7)
`A Secure and Reliable Bootstrap
`Architecture, SP ’97 Proceedings of the
`1997 IEEE Symposium on Security and
`Privacy, pp. 66-71 (“Arbaugh 1997”) (Ex.
`8)
`Issue Date
`Patent Number
`U.S. 4,658,093 (“Hellman Patent”) (Ex. 9) Apr. 14, 1987
`U.S. 4,688,169 (“Joshi Patent”) (Ex. 10)
`Aug. 18, 1987
`U.S. 4,757,533 (“Allen Patent”) (Ex. 11)
`July 12, 1988
`U.S. 4,866,769 (“Karp Patent”) (Ex. 12)
`Sep. 12, 1989
`U.S. 5,103,476 (“Waite 476 Patent) (Ex.
`Apr. 7, 1992
`13)
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Tygar et al.
`
`Yee
`
`Clark et al.
`
`Yee et al.
`
`Arbaugh et al.
`
`AMI et al.
`
`Arbaugh et al.
`
`Inventor
`Hellman
`Joshi
`Allen et al.
`Karp
`Waite
`
`
`sf-3054790
`
`2
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page5 of 74
`
`
`
`U.S. 5,222,134 (“Waite 134 Patent) (Ex.
`14)
`June 28, 1994
`U.S. 5,325,430 (“Smyth Patent”) (Ex. 15)
`U.S. 5,371,876 (“Ewertz Patent”) (Ex. 16) Dec. 6, 1994
`U.S. 5,473,692 (“Davis 692 Patent”) (Ex.
`Dec. 5, 1995
`17)
`U.S. 5,490,216 (“Richardson Patent”) (Ex.
`18)
`U.S. 5,509,070 (“Schull Patent”) (Ex. 19) Apr. 16, 1996
`U.S. 5,537,544 (“Morisawa Patent”) (Ex.
`July 16, 1996
`20)
`U.S. 5,568,552 (“Davis 552 Patent”) (Ex.
`21)
`Christenson et al. U.S. 5,579,522 (“Christenson Patent”)
`(Ex. 22)
`U.S. 5,666,411 (“McCarty Patent”) (Ex.
`23)
`U.S. 5,734,819 (“Lewis Patent”) (Ex. 24) Mar. 31, 1998
`Lewis
`O’Connor et al. U.S. 5,745,568 (“O’Connor Patent”) (Ex.
`Apr. 28, 1998
`25)
`U.S. 5,844,986 (“Davis 986 Patent”) (Ex.
`26)
`U.S. 5,892,902 (“Clark Patent”) (Ex. 27) Apr. 6, 1999
`U.S. 5,892,906 (“Chou Patent”) (Ex. 28)
`Apr. 6, 1999
`U.S. 5,901,311 (“Labatte 311 Patent”) Ex.
`May 4, 1999
`29)
`U.S. 5,913,057 (“Labatte 057 Patent”)
`(Ex. 30)
`U.S. 5,940,504 (“Grisworld Patent”) (Ex.
`31)
`U.S. 5,944,820 (“Beelitz Patent”) (Ex. 32) Aug. 31, 1999
`U.S. 6,049,670 (“Okada Patent”) (Ex. 33)
`
`U.S. 6,026,293 (“Osborn Patent”) (Ex. 34) Feb. 15, 2000
`U.S. 6,038,320 (“Miller Patent”) (Ex. 35) Mar. 14, 2000
`U.S. 6,138,236 (“Mirov Patent”) (Ex. 36) Oct. 24, 2000
`U.S. 6,148,083 (“Fieres Patent”) (Ex. 37) Nov. 14, 2000
`U.S. 6,153,835 (“Schwartz Patent”) (Ex.
`Nov. 28, 2000
`38)
`U.S. 6,185,678 (“Arbaugh Patent”) (Ex.
`39)
`U.S. 6,189,146 (“Misra Patent”) (Ex. 40)
`U.S. 6,209,099 (“Saunders Patent”) (Ex.
`41)
`U.S. 6,243,468 (“Pearce Patent”) (Ex. 42)
`U.S. 6,269,392 (“Cotichini Patent”) (Ex.
`43)
`
`Jun. 22, 1993
`
`Feb. 6, 1996
`
`Oct. 22, 1996
`
`Nov. 26, 1996
`
`Sep. 9, 1997
`
`Dec. 1, 1998
`
`June 15, 1999
`
`
`
`Feb. 6, 2001
`
`Feb. 13, 2001
`Mar. 27, 2001
`
`Jun. 5, 2001
`July 31, 2001
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Waite
`
`Smyth
`Ewertz
`Davis
`
`Richardson
`
`Schull
`Morisawa et al.
`
`Davis et al.
`
`McCarty
`
`Davis
`
`Clark
`Chou et al.
`Labatte et al.
`
`Labatte et al.
`
`Griswold
`
`Beelitz
`Okada
`Osborn
`Miller
`Mirov et al.
`Fieres et al.
`Schwartz et al.
`
`Arbaugh et al.
`
`Misra et al.
`Saunders
`
`Pearce et al.
`Cotichini et al.
`
`
`sf-3054790
`
`3
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page6 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`U.S. 6,523,119 (“Pavlin Patent”) (Ex. 44) Feb. 18, 2003
`Pavlin et al.
`U.S. 6,735,696 (“Hannah Patent” (Ex. 45) May 11, 2004
`Hannah
`Table A: Pat. L.R. 3-3(a) Identification of References
`Furthermore, Apple identifies the following products that may constitute
`prior use, offer for sale, sale, or knowledge under 35 U.S.C. § 102.
`•
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to BIOS locking: Many PC manufacturers
`utilized a BIOS locking concept by which media used to restore PC
`systems would install only if certain information was present in the
`target non-volatile memory holding the PC’s BIOS. Specifically, PC
`manufacturers would place information in such a non-volatile memory
`containing the PC’s BIOS. When the system restore CD was loaded,
`the installation program would not install the restore programs (e.g.
`operating system) if the installation program could not confirm the
`presence of the proper information in the non-volatile memory/BIOS.
`PC manufacturers would implement this BIOS Locking concept using
`their own software solutions. PC manufacturers also implemented
`BIOS Locking in connection with recovery partitions on a hard disk.
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to ABYSS. A publication describing ABYSS is
`identified in Table A (White et al. article).
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to Dyad and/or its extensions: Publications
`describing Dyad are identified in Table A (Tygar 1991, Yee 1994, Yee
`1995).
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to DMI BIOS: Publications and patents
`
`•
`
`•
`
`•
`
`
`sf-3054790
`
`4
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page7 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`•
`
`•
`
`describing the DMI BIOS are identified in Table A (DMI BIOS
`Specification & Labatt et al. patents).
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to AEGIS: Publications and patents describing
`AEGIS are identified in Table A and Exhibit 46 (Arbaugh et al. articles
`and patent).
`Systems and methods invented, designed, developed and/or in public
`use or on sale related to the Citadel coprocessor: Publications and
`patents describing Citadel are identified in Table A (Yee articles).
`Although the articles and patents corresponding to the above products
`disclose how the products anticipate or render obvious the Asserted Claims, the
`products themselves may contain other instances of anticipating or rendering
`obvious the Asserted Claims. Where Apple cites to articles and patents referring to
`one version of the product, including those products not specifically identified
`above, Apple incorporates and relies on all versions of the same product. As
`discovery is ongoing, Apple reserves the right to identify other locations within the
`product where the Asserted Claims are disclosed, or other documents and code
`evidencing the structure and operation of these products.
`Depending on the Court’s conclusions as to the constructions of the Asserted
`Claims, Apple may identify or rely upon additional references, either individually
`or in combination, as anticipating or rendering obvious the Asserted Claims. Some
`of these potential additional references appear in Exhibit 46. Apple reserves the
`right to amend its invalidity contentions or these references depending on the claim
`construction and infringement positions Ancora may take.
`B.
`Patent L.R. 3-3(b)
`The Asserted Claims of the ’941 patent are invalid in light of the prior art
`identified above. To the extent that any of the prior art references identified above
`do not anticipate the Asserted Claims of the ’941 patent, their combination with the
`
`sf-3054790
`
`5
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page8 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`knowledge of one of ordinary skill in the art and/or other prior art disclosing the
`allegedly missing limitations renders the asserted claims of the ’941 patent obvious.
`Because the ’941 patent simply arranges old elements with each performing
`the same function it had been known to perform and yields no more than what one
`would expect from such an arrangement, the combination is obvious. See KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 419-421 (2007). Moreover, since there were a
`finite number of predictable solutions, a person of ordinary skill in the art had good
`reason to pursue the known options. Id. In particular, the Supreme Court stated
`that courts should “look to interrelated teachings of multiple patents; the effects of
`demands known to the design community or present in the marketplace; and the
`background knowledge possessed by a person having ordinary skill in the art, all in
`order to determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” Id. at 418.
`In the prior art, there were well-recognized design needs and market
`pressures to restrict the use of unauthorized software. For instance, the Joshi Patent
`recognized this need as it sought to provide “an improved computer software
`security system which prevents a program from executing on computers other than
`an authorized machine” (e.g., col. 2:25-29). The prior art suggests the same or
`similar solutions to these issues. Using the BIOS to provide security to software
`was common in the marketplace. For instance, the Miller Patent taught using the
`“BIOS flash memory” (e.g., col. 2:59-3:7) and the Chou Patent taught using the
`“BIOS EEPROM” (e.g., col. 8:18-23; Fig. 3.). Moreover, the O’Connor Patent
`taught that an “identifier is permanently programmed into a segment or multiple
`segments of a BIOS memory” (e.g., col. 3:34-49), and the Hannah Patent taught
`that “the BIOS certifies the operating system” of a computer (e.g., col. 2:54-3:41).
`Additionally, Arbaugh 1996 recognized that the BIOS could “contain the
`verification code, and public key certificates” (e.g., p. 66). Indeed, the Cotichini
`Patent recognized that a “security system may be embodied in internal memory
`
`sf-3054790
`
`6
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page9 of 74
`
`
`
`devices such as ROM BIOS” (e.g., Abstract), and the Misra Patent taught that
`software licenses could be organized in a license cache that is “kept in persistent
`(non-volatile) storage” (e.g., 12:8-16). Thus, it would have been obvious to one of
`ordinary skill in the art to combine the teachings in any of these references.
`Such similar solutions and interrelated teachings provided ample reason to
`combine the prior art elements as taught in any of these references with each other
`or the features in other prior art, such as the Davis Patents, which taught a security
`solution involving an “integrated circuit component including a memory element
`for internally storing a unique digital certificate” (e.g., Davis 692 Patent, col. 2:58-
`65). Likewise, any of these references could be combined with the Lewis Patent,
`which taught “using non-volatile memory where critical data is written” to monitor
`security of software (e.g., col. 2:66-3:3), the Clark Patent, which taught that
`“critical information such as boot sector information [], file integrity information
`[]and authentication information []may be stored in the EEPROM” (e.g., col. 3:24-
`44), or the Osborn Patent, which taught authentication of values stored in EEPROM
`(e.g., col. 8:21-42). Because of the inter-related teachings of these prior art
`references, it would have been obvious to one of ordinary skill in the art to combine
`any of these references.
`Indeed, the ’941 patent acknowledges that it was well known in the art to
`“validate authorized software usage by writing a license signature onto the
`computer’s volatile memory (e.g., hard disk)” (1:19-21). Using the BIOS and/or
`non-volatile memory to “validate authorized software usage” would have been
`obvious to one of ordinary skill in the art. For instance, in addition to the security
`techniques of the prior art above, the security methods taught in the Lewis Patent
`used “electronic security information stored in the non-volatile memory” (e.g., col.
`3:6-15). Thus, it would have been obvious to one of ordinary skill in the art to
`combine any of the above references.
`
`
`sf-3054790
`
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page10 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`The prior art references themselves also suggest their use in a variety of
`applications and combinations, further supporting a finding of obviousness. For
`example, the Yee references teach using “a secure processor” that can provide
`“software copy protection” as well as “greater protection for customers in point-of-
`sale applications” (e.g., Yee 1995, p. 155).” The Allen Patent taught a “tamper-
`proof manner of protecting user-access and file-access” (e.g., Abstract). Tygar
`1991 implemented a solution for “protecting the integrity of publicly accessible
`workstations” and “copy protection” (e.g., Abstract). As another example, the
`Arbaugh references recognized the need for “a secure bootstrap process” by
`“ensuring the integrity of bootstrap code” (e.g., Arbaugh 1996 at p. 1). Similarly,
`the Beelitz Patent taught a “method for providing a modifiable partition boot
`record” (e.g., Abstract). Thus, it would have been obvious to one of ordinary skill
`in the art to combine the teachings of any of these prior art references with each
`other or the features in other prior art, such as the Richardson Patent, which
`described a solution to protect commercially available software (e.g., col. 1:10-
`2:24) or the Hellman Patent, which described a solution for a “secure software
`distribution system” (e.g., col. 1:4-7). Indeed, the background of the ’941 patent
`recites that “[n]umerous methods have been devised for identifying and restricting
`of an unauthorized software program’s operation” (col. 1:11-13). Moreover, the
`interrelated teachings of the prior art as described in Exhibits 1-45 support a finding
`of obviousness.
`The nature of the problem that was sought to be solved also would suggest
`that the ’941 patent was obvious to one of the ordinary skill in the art. For instance,
`the art recognized using secured components that are not “vulnerable to attack at
`the hands of skilled system’s programmers (e.g., ‘hackers’)” as described in the
`’941 patent (col. 1:21-24). In addition to the many references described above
`which taught using the BIOS, non-volatile memory, secure processors, or a secure
`bootstrap process for enhanced software security, Clark 1994 taught the use of
`
`sf-3054790
`
`8
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page11 of 74
`
`
`
`“secure processors” and “smartcards” that are “resistant to attack, as they need not
`depend upon potentially vulnerable external resources” (p. 66-67). Likewise,
`Abyss taught a “protected processor” with “secure memory for storage of Rights-
`To-Execute” that govern software protection (e.g., p. 39). The Pavlin Patent taught
`an “EEPROM address space” that included “a license address space” (e.g., col.
`5:33-56). Similarly, the Joshi Patent taught using codes stored in PROM to verify
`authorized software (e.g., col. 3:59-63), and the Mirov Patent taught a flash PROM
`that “is divided into two main sections: the authentication section . . . and a
`programmable section” (e.g., col. 3:56-4:7). Other examples include Tygar 1991,
`which taught that “cryptographic checksums of images must be stored in the secure
`coprocessor’s NVM and protected against modification” (e.g., p. 9) and Yee 1995,
`which taught “a secure coprocessor” that has “memory inaccessible to all entities
`except the secure coprocessor itself – enough private non-volatile memory to store
`the secrets” (e.g., p. 166). Thus, it would have been obvious to one of ordinary
`skill in the art to combine the teachings in any of these references.
`Additionally, it would have been obvious to one of ordinary skill in the art to
`combine the teachings in any of the above references with the teachings in other
`references related to modifying or expanding the BIOS. Such references include
`the DMI BIOS Specification and the Labatte Patents, which taught methods of
`utilizing the computer BIOS, the Smyth Patent, which taught “[m]odifications to
`the standard BIOS” (e.g., col. 15:1-28), the Ewertz Patent, which taught “expanding
`the memory capacity for the BIOS” (e.g., col. 3:21-46), or the Christenson Patent,
`which taught a flash memory that contained an updateable BIOS area (e.g., col.
`3:30-36). Similarly, any of these references could be combined with the Chou
`Patent, which taught a “security function” that was “stored in the BIOS memory”
`(e.g., col. 2:14-23) or the Miller Patent, which taught matching key codes “assigned
`to the computer [] and stored in BIOS flash memory” (e.g., col. 4:7-29).
`
`
`sf-3054790
`
`9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page12 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`To add another layer of protection to software, one of ordinary skill in the art
`would have added encryption and cryptography to the teachings of any of the above
`references based on his background knowledge or based on the methods taught in,
`for example, the Fieres Patent (e.g., col. 7:49-56), the Saunders Patent (e.g., col.
`2:52-60), or the Mirov Patent (e.g., col. 4:27-55). Additionally, any of the above
`references could be combined with the Osborn Patent which taught a method that
`“authenticates the signed value pair . . . stored in the EEPROM [which] may
`involve authenticating the signed valid hash value by processing it with a public
`key []and then comparing the result with the unsigned hash value” (e.g., col. 8:21-
`42) or the Davis 692 Patent, which taught “a non-volatile memory element [], such
`as flash memory, which stores appropriate cryptographic algorithms such as ‘RSA’
`and ‘DES’, the public/private key pair [], [and] a digital certificate for verifying the
`authenticity of the key pair (labeled ‘DC’)” (e.g., col. 6:62-7:8).
`Furthermore, one of ordinary skill in the art would have implemented the
`protection methods of the above identified references with a remote server, based
`on his background knowledge. Additionally, one of ordinary skill in the art would
`have implemented the protection methods of the above identified references by
`using a remote “licensing processor” such as that taught in the Schull Patent (e.g.,
`col. 5:1-18) or a remote “registration computer” such as that taught in the Waite
`Patents (e.g., Waite 476 Patent, at Abstract). Likewise, the Richardson Patent
`taught communicating with a remote “registration authority” to check authorized
`use of software (e.g., col. 7:36-51), and the Clark Patent taught security methods
`via a “remote host computer” (e.g., col. 6:32-36). Other relating teachings include,
`for instance, the Griswold Patent, which disclosed remote authorization of a
`licensed product via a “communications network” (e.g., col. 5:44-52) and the
`Okada Patent, which discloses that a user connecting to a remote “host computer”
`to register software (e.g., col. 8:42-46). The methods taught in the above prior art
`could be combined with, for instance, the protection methods of Tygar 1991, which
`
`sf-3054790
`
`10
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page13 of 74
`
`
`
`teach a “communication server” (e.g., p. 25) or the protection methods of Clark
`Patent, which teach a “remote host computer” (e.g., col. 6:1-23).
`Also, one of ordinary skill in the art would have combined the methods in the
`above prior art with his knowledge about generating license records from the
`software information. Moreover, such a teaching is prevalent in the prior art and
`one of ordinary skill in the art would have combined such prior art teachings with
`other references. For instance, The Design and Implementation of Tripwire (Kim),
`teaches generating records that include file attributes from the file metadata and file
`itself. Indeed, Yee 1994 specifically references TripWire (e.g., p. 17). Likewise,
`the above prior art references could be combined with a method to “hash the
`concatenation of [a] product ID and hardware ID to produce [a] registration ID” to
`send to a “registration authority” as taught by the Pearce Patent (e.g., col. 2:52-
`3:15) or a method to use a “tariff file” that includes an “application ID,” ‘publisher
`identification code” and an “encryption key,” as taught by the Archibald patent
`(e.g., U.S. 5,825,883, at col. 6:12-27). The prior art could also be combined with
`the “clearinghouse” and licenses used to protect software as taught by the Misra
`Patent.
`Moreover, one of ordinary skill in the art would have implemented the
`protection methods of any of the above identified references using secure keys,
`identifications, or passwords such as a “randomly determined CPU identification”
`or a “unique source identification” as taught by the Karp Patent (e.g., col. 2:51-66),
`a “system identifier . . . and a system sipher key” as taught by the McCarty Patent
`(e.g., col. 7:31-8:3) or “authorization numbers” as taught by the Schwartz Patent
`(e.g., col. 10:21-54). Similarly, any of the above references could also be combined
`with the Morisawa Patent, which taught “a non-volatile password memory for
`storing one or more registered passwords” (e.g., col. 3:4-23), the Schull Patent,
`which taught a “nearly-unique ‘tattoo’” stored in non-volatile memory (e.g., col.
`
`
`sf-3054790
`
`11
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page14 of 74
`
`
`
`8:31-50) or the Labatte Patents, which taught that an “access key is passed to
`BIOS” (e.g., Labbatte 311 Patent, at col. 5:44-54).
`Additionally, the above identified prior art references use those familiar
`elements for their primary or well known purposes in a manner well within the
`ordinary level of skill in the art. Accordingly, common sense and knowledge of the
`prior art render the claims invalid under either § 102 or § 103.
`As explained above, a person of ordinary skill would have been motivated to
`combine the above prior art based on the nature of the problem to be solved, the
`teachings of the prior art, and the knowledge of persons of ordinary skill in the art.
`To the extent that Ancora challenges a combination of prior art with respect to a
`particular element, Apple reserves the right to supplement these contentions to
`further specify the motivation to combine the prior art. Apple may rely on cited or
`uncited portions of the prior art, other documents, and expert testimony to establish
`that a person of ordinary skill in the art would have been motivated to modify or
`combine the prior art so as to render the claims invalid as obvious. In addition to
`the combinations identified above, a non-exhaustive list of exemplary combinations
`of prior art that render obvious the Asserted Claims include:
`• Miller Patent in view of one or more of the following: Yee 1995, Tygar
`1991, Arbaugh 1996, Hannah Patent, Lewis Patent, Joshi Patent, Clark
`Patent, Chou Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Yee 1995 in view of one or more of the following: Miller Patent, Tygar
`1991, Arbaugh 1996, Hannah Patent, Clark Patent, Joshi Patent, Lewis
`Patent, Chou Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Arbaugh 1996 in view of one or more of the following: Miller Patent,
`Tygar 1991, Yee 1995, Hannah Patent, Clark Patent, Joshi Patent, Lewis
`
`
`sf-3054790
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page15 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`Patent, Chou Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Clark Patent in view of one or more of the following: Miller Patent, Yee
`1995, Tygar 1991, Arbaugh 1996, Hannah Patent, Joshi Patent, Lewis
`Patent, Chou Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Lewis Patent in view of one or more of the following: Miller Patent, Yee
`1995, Tygar 1991, Arbaugh 1996, Hannah Patent, Joshi Patent, Chou
`Patent, Clark Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Tygar 1991 in view of one or more of the following: Lewis Patent,
`Miller Patent, Yee 1995, Arbaugh 1996, Hannah Patent, Joshi Patent,
`Chou Patent, Clark Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`• Chou Patent in view of one or more of the following: Lewis Patent,
`Miller Patent, Yee 1995, Arbaugh 1996, Hannah Patent, Joshi Patent,
`Tygar 1991, Clark Patent, Davis 692 Patent, Misra Patent, Schull Patent,
`Richardson Patent, Waite Patents, and/or Fieres Patent
`Patent L.R. 3-3(c)
`C.
`Charts identifying where in each item of prior art each limitation of each
`
`Asserted Claim is found, is attached hereto as Exhibits 1-43. Apple cites the most
`relevant portions of the identified prior art references. However, other portions of
`the identified prior art may additionally disclose one or more limitations of the
`Asserted Claims.
`D.
`Patent L.R. 3-3(d)
`Depending on the Court’s construction of the Asserted Claims, the Asserted
`Claims are invalid for lack of written description and/or enablement under 35
`U.S.C. § 112 ¶ 1 and for failing to particularly point out and distinctly claim the
`
`sf-3054790
`
`13
`
`
`
`IPR2021-00663
`ANCORA EX2004
`
`

`

`Case4:11-cv-06357-YGR Document171-3 Filed08/25/15 Page16 of 74
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`subject matter that the applicant regards as his invention under 35 U.S.C. § 112 ¶ 2.
`In light of the deficiencies in Ancora’s Infringement Contentions, Apple reserves
`the right to supplement these Invalidity Contentions to further identify bases for
`invalidity under 35 U.S.C. § 112, ¶¶ 1 & 2. Apple identifies below the grounds
`upon which the Asserted Claims are invalid based on indefiniteness under 35
`U.S.C. § 112 ¶ 2 and lack of written description and enablement under 35 U.S.C.
`§ 112 ¶ 1.
`1.
`Indefiniteness under 35 U.S.C. § 112 ¶ 2
`•
`“volatile memory” and “non-volatile memory” – Claim 1 recites both
`“volatile memory” and “non-volatile memory.” “Volatile memory”
`generally refers to memory that loses the data it holds when the power
`to the memory is removed. The ’941 patent, however, states that
`“volatile memory” includes at least a “hard disk,” (col. 1:19-21), which
`does not lose the data it holds when the power to the hard disk is
`removed. Given the conflicting use of the terms “volatile memory”
`and “non-volatile memory,” it is uncertain what falls within the scope
`of “volatile memory” and further uncertain what falls within the scope
`of “non-volatile