UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`______________
`
`
`SONY MOBILE COMMUNICATIONS AB, SONY MOBILE
`COMMUNICATIONS, INC., SONY ELECTRONICS INC., and
`SONY CORPORATION,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`
`___________
`
`
`Case IPR2021-00663
`Patent No. 6,411,941
`
`______________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`FOR INTER PARTES REVIEW UNDER 37 C.F.R. §42.107
`
`
`
`
`
`
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`
`
`TABLE OF CONTENTS
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Table of Authorities ............................................................................................... ii
`
`Updated List of Exhibits ....................................................................................... iii
`
`I.
`
`II.
`
`Introduction ................................................................................................. 1
`
`Standard for granting Inter Partes review .................................................... 2
`
`III. Overview of the ’941 Patent ........................................................................ 2
`
`IV. Claim Construction ...................................................................................... 6
`
`V.
`
`The Hellmann and Chou combination is cumulative of art already
`considered by this Board .............................................................................14
`
`A.
`
`B.
`
`The outcome of the alleged combination of Hellman and Chou
`is no different from Schwartz, which this Office found “no
`reasonable examiner would have found… important in
`determining the patentability of claims 1-19” ...................................14
`The Hellman and Chou combination is cumulative of a prior art
`combination the Patent Office found did not, “singly or
`collectively,” disclose “licensed programs running at the OS
`level interacting with a program verification structure stored in
`the BIOS” .........................................................................................19
`
`VI. A POSITA would not have been motivated to combine Hellman and
`Chou, which disclose incompatible (and thus un-combinable)
`techniques for storing critical data that, if combined, could result in
`data loss and system instability ...................................................................23
`
`VII.
`
`It would not have been obvious to modify Hellman to include the
`recited BIOS memory .................................................................................25
`
`VIII. Hellman is a hardware device and does not disclose an OS-level
`software “agent” for setting up a verification structure as Claim 1
`requires .......................................................................................................28
`
`IX. Conclusion ..................................................................................................34
`
`Certificate of Service ............................................................................................36
`
`Certificate of Compliance Pursuant to 37 C.F.R. §42.24 .......................................37
`
`
`
`
`
`i
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Table of Authorities
`
`Cases
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Ancora Techs., Inc. v. Apple, Inc.,
`
`744 F.3d 732 (Fed. Cir. 2014) ............................................................. 3, 5, 20
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`
`908 F.3d 1343 (Fed. Cir. 2018) ................................................. 3, 4, 6, 20, 22
`
`HTC Corp. v. Ancora Techs., Inc.,
`
`No. CBM2017-00054, Institution Decision, Paper 7 (Dec. 1, 2017)............. 6
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`
`688 F.3d 1342 (Fed. Cir. 2012) .................................................................... 2
`
`OrthoPediatrics Corp. v. K2M, Inc.,
`
`IPR2018-01548 (PTAB March 1, 2019) ............................................... 14, 34
`
`
`
`Statutes
`
`35 U.S.C. §101 ...................................................................................................... 6
`35 U.S.C. §103 ...................................................................................................... 2
`35 U.S.C. §314 ...................................................................................................... 2
`37 C.F.R. §2.108 .................................................................................................... 2
`
`
`
`Other Authorities
`
`Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012)............................................... 2
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Updated List of Exhibits
`
`Atty. Dkt. No.: ANCC0121IPR
`
`
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`2009
`
`2010
`
`2011
`
`Description
`Scheduling Order, Ancora Technologies, Inc. v.
`Sony Mobile Communications AB et al., Case
`No. 19-1703-CFC (Dkt. #24)
`Sony’s Invalidity Contentions, Ancora
`Technologies, Inc. v. Sony Mobile
`Communications AB et al., Case No. 19-1703-
`CFC
`Sony’s Appendices A-E to Invalidity
`Contentions, Ancora Technologies, Inc. v. Sony
`Mobile Communications AB et al., Case No. 19-
`1703-CFC
`Apple Patent L.R. 3-3 Disclosures, Ancora
`Technologies, Inc. v. Apple, Inc., Case No. 4:11-
`cv-06357 (Dkt. #171-3)
`Order Setting Patent Case Schedule, Ancora
`Technologies, Inc. v. HTC America, Inc., Case
`No. 2:16-cv-01919 (Dkt. #56)
`E-mail from Canavera to trials@uspto.gov
`Complaint, Ancora Technologies, Inc. v. Sony
`Mobile Communications AB et al., Case No. 19-
`1703-CFC (Dkt. #1)
`Judge Connolly Docket Navigator Statistic
`Scheduling Order, Ancora Technologies, Inc. v.
`LG Electronics, Inc. et al., Case No. 1:20-cv-
`00034 (WDTX) (Dkt. #129)
`Expert Report of Suzanne Barber, Ancora
`Technologies, Inc. v. LG Electronics, Inc. et al.,
`Case No. 1:20-cv-00034 (WDTX)
`Declaration of Erez Zadok, Ancora
`Technologies, Inc. v. LG Electronics, Inc. et al.,
`Case No. 1:20-cv-00034 (WDTX) (Dkt. #45-1)
`
`Date
`Sept. 16, 2020
`
`Dec. 18, 2020
`
`Dec. 18, 2020
`
`Aug. 25, 2015
`
`Mar. 11, 2019
`
`Feb. 19, 2021
`Sept. 11, 2019
`
`Apr. 15, 2021
`Jan. 28, 2021
`
`Jan. 22, 2021
`
`Mar. 20, 2020
`
`iii
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`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Exhibit
`No.
`2012
`
`Description
`Joint Claim Construction Chart, Ancora
`Technologies, Inc. v. Sony Mobile
`Communications AB et al., Case No. 19-1703-
`CFC (Dkt. #34, 34-1, 34-2)
`2013 NEW Ancora’s Preliminary Response to Petition,
`Case No. IPR2020-01609 (Dkt. 6)
`2014 NEW Decision Granting Institution, Case No.
`IPR2020-01609 (Dkt. 7)
`2015 NEW Declaration of Dr. David Martin, Ph.D.
`2016 NEW Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732
`(Fed. Cir. 2014)
`2017 NEW Phil Croucher, “The BIOS Companion,” Tri-
`Tam Enterprises Inc. 1997
`2018 NEW Telephonic Markman Hearing Tentative Ruling,
`Ancora Technologies, Inc. v. TCT Mobile (US),
`Inc. et al., Case No. 8:19-cv-02192 (CDCA)
`(Dkt. #60)
`RESERVED
`2019
`RESERVED
`2020
`RESERVED
`2021
`2022 NEW US Patent 6,189,146 B1 (“Misra”)
`2023 NEW US Patent 5,479,639 (“Ewertz”)
`2024 NEW Microsoft Corporation’s Request for Ex Parte
`Reexamination Image File Wrapper, Control
`No. 90010560
`2025 NEW Final Rulings on Claim Construction, Ancora
`Technologies, Inc. v. TCT Mobile (US), Inc. et
`al., Case No. 8:19-cv-02192 (CDCA) (Dkt. #66,
`#69)
`
`Date
`April 6, 2021
`
`Dec. 17, 2020
`
`Feb. 16, 2021
`
`
`
`
`
`
`Oct. 15, 2020
`
`
`
`
`Feb. 13, 2001
`Dec. 26, 1995
`
`
`Nov. 12, 2020;
`Nov. 19, 2020
`
`
`
`
`
`iv
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`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`I.
`
`Introduction
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Pursuant to 37 C.F.R. §42.107, Patent Owner, Ancora Technologies, Inc.
`
`(“Patent Owner”), submits the following Preliminary Response to the Petition for
`
`Inter Partes Review of U.S. Patent No. 6,411,941 (“the ’941 Patent”).
`
`TCT Mobile (US) Inc., Huizhou TCL Mobile Communication Co., Ltd., and
`
`Shenzhen TCL Creative Cloud Technology Co., Ltd. (collectively, “TCT”) filed a
`
`Petition in IPR2020-01609 (“the ’1609 IPR”), requesting an inter partes review
`
`(“IPR”) of claims 1−3, 6−14, and 16 (“the challenged claims”) of U.S. Patent No.
`
`6,411,941. (See IPR2020-01609, Paper 12 at 1.) Although Ancora filed a
`
`preliminary response (Ex. 2013) challenging certain issues of the TCT petition, this
`
`Board instituted on February 16, 2021. (Ex. 2014.)
`
`Seeking to join the TCT petition, Sony Mobile Communications AB, Sony
`
`Mobile Communications, Inc., Sony Electronics Inc., and Sony Corporation
`
`(collectively, “Sony”) filed its petition in IPR2021-00663 (“the ’663 IPR”).1 As
`
`supported by
`
`the declaration of Dr. David Martin (Ex. 2015, “Martin
`
`
`1 Samsung Electronics, Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Samsung”) also filed a joinder Petition in IPR2021-00583 (“the
`
`’583 IPR”) but has subsequently settled and moved to dismiss its petition.
`
`(IPR2021-00583, Paper 11.)
`
`1
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`Declaration”), Sony’s petition simply treads old ground and does not overcome the
`
`Atty. Dkt. No.: ANCC0121IPR
`
`presumption of patentability for the claims of the ’941 Patent.
`
`II.
`
`Standard for granting Inter Partes review
`
`The Board may only grant a petition for inter partes review where “the
`
`information presented in the petition . . . shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. §314(a); 37 C.F.R. §2.108(c). Petitioner bears the
`
`burden of showing that this statutory threshold has been met. See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012) [hereinafter
`
`“Practice Guide”] (“The Board . . . may institute a trial where the petitioner
`
`establishes that the standards for instituting the requested trial are met . . . .”).
`
`As to Petitioner’s claim of obviousness under 35 U.S.C. §103, Petitioner
`
`must show where each claim limitation (as properly construed) is found in the prior
`
`art. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1361
`
`(Fed. Cir. 2012). Failure to do so defeats a claim of obviousness. Id. The Office
`
`Patent Trial Practice Guide specifies that among the many responses a patent
`
`owner can submit to a petition include: “The prior art lacks a material limitation in
`
`all of the independent claims.” Practice Guide, 77 Fed. Reg. at 48,764.
`
`III. Overview of the ’941 Patent
`
`The ’941 Patent relates to a specific technique for “identifying and
`
`2
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`restricting an unauthorized software program’s operation.” (Ex. 1001 at 1:6-8.)
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Before the ’941 Patent, there were two basic methods of verifying and
`
`restricting the operation of a program. One involved “software-based methods”
`
`that “require[d] writing a license signature on the computer’s hard drive.” Ancora
`
`Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344 (Fed. Cir. 2018) (“HTC”). A
`
`key “flaw in those methods,” however, “is that such a signature can be changed by
`
`hackers without damaging other aspects of computer functionality.” Id. citing Ex.
`
`1001 at 1:19-26. Hardware-based methods also existed, but “require[d] inserting a
`
`dongle into a computer port to authenticate the software authorization.” Id. citing
`
`Ex. 1001 at 1:27-32. As a result, those “methods are costly, inconvenient, and not
`
`suitable for software sold and downloaded over the internet.” Id.
`
`The ’941 Patent improved over these prior art techniques by “using the
`
`memory space associated with the computer’s basic input/output system (BIOS),
`
`rather than other memory space, to store appropriately encrypted license
`
`information to be used in the verification process.” Ancora Techs., Inc. v. Apple,
`
`Inc., 744 F.3d 732, 733 (Fed. Cir. 2014), citing Ex. 1001 at 1:46-2:5, 4:45-48, and
`
`5:19-24. Such BIOS memory space was and “is typically used for storing programs
`
`that assist in the start-up of a computer.” HTC, 908 F.3d at 1345. Prior to the ’941
`
`invention, however, it was not contemplated that operating system (“OS”) level
`
`programs could interact with the BIOS at all—much less “us[e] an agent to setup a
`
`3
`
`

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`Case No.: IPR2021-00663
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`verification structure in the erasable non-volatile memory area of the BIOS.” Ex.
`
`Atty. Dkt. No.: ANCC0121IPR
`
`1002 at 34; HTC, 908 F.3d at 1348-49 (stating that “[t]he claimed method here
`
`specifically identifies how that functionality improvement is effectuated in an
`
`assertedly unexpected way: a structure containing a license record is stored in a
`
`particular, modifiable, non-volatile portion of the computer’s BIOS, and the
`
`structure in that memory location is used for verification”).
`
`As the Federal Circuit explained, using the BIOS in this unexpected manner
`
`“improves computer security, . . . because successfully hacking BIOS memory
`
`(i.e., altering it without rendering the computer inoperable) is much harder than
`
`hacking the memory used by the prior art to store license-verification information.”
`
`HTC, 908 F.3d at 1345. During examination, the Patent and Trademark Office
`
`described the invention as proceeding against the conventional wisdom in the art to
`
`do something “the closest prior art systems, singly or collectively,” never
`
`contemplated: “using an agent to set up a verification structure in the erasable,
`
`non-volatile memory of the BIOS.” (Ex. 1002 at 34.)
`
`The claims of the ’941 Patent have been extensively re-examined since the
`
`Patent and Trademark Office’s original examination in 2002. In 2009, Microsoft
`
`requested ex parte reexamination of the ’941 Patent. Control No. 90/010,560. (Ex.
`
`2024.) In that proceeding, the Patent and Trademark Office confirmed the
`
`patentability of all 19 claims of the ’941 Patent. Specifically, the Patent Office
`
`4
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`

`

`Case No.: IPR2021-00663
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`
`
`explained “memory of the BIOS.” The Patent Office made clear that, “consistent
`
`Atty. Dkt. No.: ANCC0121IPR
`
`with the specification of the ’941 patent,” memory of the “BIOS is therefore
`
`defined by the functional descriptive material contained within it.” (Ex. 2024 at
`
`164.) Simply put, “one skilled in the art” would consider memory to be “memory
`
`of the BIOS” only if it was non-volatile memory that contains data “used by the
`
`functions of BIOS itself,” which the Patent Office explained includes to “test
`
`hardware, start[] the operating system, and support the transfer of data among
`
`hardware devices.”2 Thus, the mere fact that data resides in non-volatile memory
`
`“does not necessarily mean that it is part of the BIOS.” (Ex. 2024 at 164.) More is
`
`required to meet the claims. Accordingly, the Patent Office confirmed the
`
`patentability of all claims of the ’941 Patent.
`
`In 2012, Apple, Inc. challenged the claims of the ’941 Patent as indefinite.
`
`The Federal Circuit affirmed the district court’s finding that the claim terms
`
`“volatile memory” and “non-volatile memory” were not indefinite. (Ex. 2016 at 6),
`
`Ancora Techs., v. Apple, Inc., 744 F.3d 732, 737-739 (Fed. Cir. 2014).
`
`In 2017, the ’941 Patent was the subject of a petition for covered business
`
`
`2 As the Patent Office also explained, this does not preclude data stored in BIOS
`
`from “being also used or modified by programs located outside of the BIOS, such
`
`as applications running in an operating system.” (Ex. 2024 at 164.)
`
`5
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
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`method review filed by HTC Corp. The Board denied institution, finding that the
`
`Atty. Dkt. No.: ANCC0121IPR
`
`’941 Patent was not a covered business method patent because it disclosed a
`
`technical solution in the form of storing the license record in the memory of the
`
`BIOS. HTC Corp. v. Ancora Techs., Inc., No. CBM2017-00054, Institution
`
`Decision, Paper 7, pp. 10–12 (Dec. 1, 2017).
`
`Most recently, in 2018, the ’941 Patent was the subject of an appeal to the
`
`Federal Circuit in Ancora Technologies, Inc. v. HTC Am., Inc., 908 F.3d 1343
`
`(Fed. Cir. 2018). The Federal Circuit reversed the district court’s ruling that the
`
`claims of the ’941 Patent were patent ineligible under 35 U.S.C. §101.
`
`IV. Claim Construction
`
`Numerous district courts have now construed the challenged claims of the
`
`’941 Patent. The below table provides each term and construction provided by the
`
`various district courts:
`
`Term
`a computer including an
`erasable, non-volatile
`memory area of the BIOS
`of the computer, and a
`volatile memory area
`(preamble of claim 1)
`
`Definition
`
`Case
`
`this portion of the preamble is
`limiting
`
`Ex. 1012 at 53
`[LG CASE]
`
`
`3 Ancora Technologies, Inc. v. LG Electronics, Inc. et al, Case No. 1:20-cv-00034
`
`(WDTX).
`
`6
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`

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`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Term
`a method of restricting
`software operation within
`a license ... (preamble of
`claim 1)
`
`acting on the program
`according to the
`verification
`
`All Asserted Claims
`
`BIOS
`
`BIOS
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Definition
`
`Case
`
`not limiting; the term "license"
`does not need to be construed
`
`Ex. 1012 at 2
`[LG CASE]
`
`Plain and ordinary meaning,
`wherein the step of “acting on
`the program” may include, but
`is not limited to, “restricting the
`program's operation with
`predetermined limitations,
`informing the user on the
`unlicensed status, halting the
`operation of the program under
`question, and asking for
`additional user interactions.”
`
`The steps of the Claim do not
`need to be performed in the
`order recited.
`
`An acronym for Basic
`Input/Output System. It is the
`set of essential startup
`operations that run when a
`computer is turned on, which
`tests hardware, starts the
`operating system, and supports
`the transfer of data among
`hardware devices.
`
`Plain and ordinary meaning
`wherein the plain and ordinary
`meaning is “An acronym for
`Basic Input / Output System. It
`is the set of essential startup
`operations that begin to run
`automatically when a computer
`is turned on, which test
`
`7
`
`Ex. 1012 at 4
`[LG CASE]
`
`Ex. 1011 at 19-
`20, 21
`[APPLE CASE]
`
`Ex. 1011 at 8-11,
`20
`[APPLE CASE]
`
`Ex. 1012 at 2
`[LG CASE]
`
`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Case
`
`Ex. 2025 at 4; see
`also Ex. 2018 at 4
`[TCL CASE]
`
`Ex. 1012 at 5
`[LG CASE]
`Ex. 2025 at 14-
`18, 20; see also
`Ex. 2018 at 18
`[TCL CASE]
`Ex. 1012 at 2 [LG
`CASE]
`Ex. 1011 at 16-
`17, 20
`[APPLE CASE]
`
`Ex. 1012 at 2
`[LG CASE]
`
`Ex. 2025 at 9-11,
`20; see also Ex.
`2018 at 9-12, 19
`[TCL CASE]
`
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Term
`
`BIOS (Basic
`Input/Output System)
`
`first non-volatile memory
`area of the computer
`
`Definition
`hardware, starts the operating
`system, and support the transfer
`of data among hardware
`devices”
`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 devises
`
`plain and ordinary meaning
`
`first non-volatile memory
`area of the computer
`
`a non-volatile memory that is
`different from the erasable, non-
`volatile memory of the BIOS
`
`license
`
`does not need to be construed
`
`license record
`
`license record
`
`license record
`
`A record from a licensed
`program with information for
`verifying that licensed program.
`data associated with a licensed
`program with information for
`verifying that licensed program
`
`
`a record from a licensed
`program with information for
`verifying that licensed program
`
`8
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
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`
`
`Atty. Dkt. No.: ANCC0121IPR
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`Term
`
`Definition
`
`license record4
`
`a record having information for
`verifying that licensed program
`
`
`memory of the BIOS
`
`does not require construction
`
`memory of the BIOS
`
`plain and ordinary meaning, i.e.,
`a memory that stores the BIOS
`
`non-volatile memory
`
`non-volatile memory area
`of the BIOS
`
`non-volatile memory of
`the BIOS
`
`non-volatile memory
`
`order of steps (claim 1)
`
`memory whose data is
`maintained when the power is
`removed or voltage is too low
`memory area of BIOS whose
`data is maintained when the
`power is removed
`
`does not require construction
`
`Memory whose data is
`maintained when the power is
`removed.
`
`Use of the verification structure,
`as described in Limitation 3,
`cannot complete until the "set
`up a verification structure" step
`has completed, as described in
`Limitation 2. “Acting on the
`program according to the
`verification," as described in
`Limitation 4, cannot complete
`until the “verifying the
`program" is completed as
`described in Limitation 3. The
`
`Case
`Ex. 2014 at 9
`[TCT Institution
`Decision]
`Ex. 1012 at 3
`[LG CASE]
`Ex. 2025 at 11-
`14, 20; see also
`Ex. 2018 at 12-
`14, 20
`[TCL CASE]
`
`Ex. 1012 at 1
`[LG CASE]
`
`Ex. 2025 at 4; see
`also Ex. 2018 at 4
`[TCL CASE]
`Ex. 1012 at 3
`[LG CASE]
`Ex. 1011 at 5-7,
`20
`[APPLE CASE]
`
`Ex. 1012 at 5
`[LG CASE]
`
`
`4 This Board previously instituted based on a preliminarily construction for
`
`the term “license record” which was different than other various district courts.
`
`9
`
`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Case
`
`Ex. 1013 at 7-10,
`37
`[LG CASE]
`
`Definition
`"selecting a program residing in
`the volatile memory" as
`described in Limitation 1 can
`occur at any time. (See also
`footnotes on Ex. 1012 at 5)
`
`Claim 1 presents restrictions
`only on when certain actions
`must complete before another is
`also completed; therefore the
`order of claim 1 steps are as
`follows:
`
`Use of the verification structure,
`as described in Limitation (c),
`cannot complete until the “set
`up a verification structure” step
`has completed, as described in
`Limitation (b); “acting on the
`program according to the
`verification,” as described in
`Limitation (d), cannot complete
`until the “verifying the
`program” is completed as
`described in Limitation (c); the
`“selecting a program residing in
`the volatile memory,” as
`described in Limitation (a), can
`occur at any time1
`
` 1
`
` Limitation [a] = “selecting a
`program residing in the volatile
`memory; Limitation [b] =
`“using an agent to set up a
`verification structure in the
`erasable, non-volatile memory
`of the BIOS, the verification
`structure accommodating data
`
`10
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Term
`
`order of steps (claim 1)
`
`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Case
`
`Ex. 1012 at 3
`[LG CASE]
`
`Ex. 1012 at 3
`[LG CASE]
`
`Ex. 2025 at 20;
`see also Ex. 2018
`at 19
`[TCL CASE]
`
`Ex. 1012 at 4
`[LG CASE]
`
`Definition
`that includes at least one license
`record; Limitation [c] =
`“verifying the program using at
`least the verification structure
`from the erasable non-volatile
`memory of the BIOS,” and
`Limitation [d] = “acting on the
`program according to the
`verification”
`a set of instruction that can be
`executed by a computer
`
`plain and ordinary meaning
`
`no construction
`
`“establishing or certifying the
`existence of a pseudo-unique
`key and establishing at least one
`license-record location”1
`
` 1
`
` Footnote not for jury.
`"Establishing at least one
`license-record location" may
`include the steps of “forming a
`license-record by at least
`partially encrypting the contents
`used to form a license-record
`with other predetermined data
`contents, using at least part of
`the pseudo-unique key; and
`storing the encrypted license-
`record”
`
`
`11
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Term
`
`program
`
`selecting a program
`residing in the volatile
`memory
`
`selecting a program
`residing in the volatile
`memory
`
`set up a verification
`structure
`
`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Term
`
`Definition
`
`set up a verification
`structure
`
`no construction
`
`Case
`Ex. 2025 at 20;
`see also Ex. 2018
`at 19
`[TCL CASE]
`
`Ex. 1012 at 3
`[LG CASE]
`
`Ex. 1013 at 28-
`36, 37
`[LG CASE]
`
`Ex. 1012 at 5
`[LG CASE]
`Ex. 1011 at 18-
`19, 21
`[APPLE CASE]
`
`Ex. 1012 at 4
`[LG CASE]
`
`Ex. 1011 at 5-7,
`20
`[APPLE CASE]
`
`Ex. 1012 at 2
`[LG CASE]
`
`using an agent to set up a
`verification structure in
`the erasable, non-volatile
`memory of the BIOS
`
`using an agent to set up a
`verification structure in
`the erasable, non-volatile
`memory of the BIOS
`
`Plain and ordinary meaning,
`wherein the plain and ordinary
`meaning of “agent” is “a
`software program or routine”
`plain and ordinary meaning,
`wherein the plain and ordinary
`meaning of “agent” is a
`software program or routine
`(§112 ¶6 does not apply)
`
`using the key
`
`using a pseudo-unique key
`
`Confirming whether a program
`is licensed using at least the
`verification structure.
`confirming whether a program
`is licensed using at least the
`verification structure
`Memory whose data is not
`maintained when the power is
`removed.
`Plain and ordinary meaning
`wherein the plain and ordinary
`meaning is “memory whose
`data is not maintained when the
`power is removed”1
`
` 1
`
` Footnote not for the jury. “For
`the corner case where the hard
`disk drive is used as virtual
`RAM, the data is not accessible
`by normal means after the
`power is removed.”
`
`12
`
`verifying the program
`using at least the
`verification structure
`verifying the program
`using at least the
`verification structure
`
`volatile memory
`
`volatile memory
`
`

`

`Atty. Dkt. No.: ANCC0121IPR
`
`Definition
`“memory whose data is not
`maintained when the power is
`removed,” with the exception
`that “where the hard disk drive
`is used as virtual RAM, the data
`is not accessible by normal
`means after the power is
`removed”
`
`Case
`
`Ex. 2025 at 4-5,
`20; see also Ex.
`2018 at 4-5, 19
`[TCL CASE]
`
`no construction
`
`Ex. 2025 at 18-
`19, 20; see also
`Ex. 2018 at 19-20
`[TCL CASE]
`
`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Term
`
`volatile memory
`
`wherein establishing a
`license - record includes
`the steps of: forming a
`license - record by
`encrypting of the contents
`used to form a license -
`record with other
`predetermined data
`contents, using the key;
`and establishing the
`encrypted license - record
`in one of the at least one
`established license -
`record locations
`
`
`Petitioner asserts that it “does not believe that any claim constructions are
`
`needed” in this proceeding. (Paper No. 1, p. 19.) But this assertion is inconsistent
`
`with Petitioner’s claim construction assertions in the parallel district court
`
`litigation. As shown by a joint claim construction chart submitted on April 6, 2021
`
`– shortly before its Petition was filed in this proceeding – Petitioner has taken
`
`claim construction positions different from those of the other district courts – and
`
`the preliminary construction of this Board. (Ex. 2012.) The fact that Sony is
`
`13
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`pursuing different claim constructions positions in the underlying district court
`
`Atty. Dkt. No.: ANCC0121IPR
`
`proceeding as compared to the present Joinder Petition is one reason for denial.
`
`OrthoPediatrics Corp. v. K2M, Inc., IPR2018-01548, Paper 9, p. 11 (PTAB March
`
`1, 2019).
`
`V. The Hellmann and Chou combination is cumulative of art already
`considered by this Board
`
`A. The outcome of the alleged combination of Hellman and
`Chou is no different from Schwartz, which this Office found
`“no reasonable examiner would have found… important in
`determining the patentability of claims 1-19”
`
`Petitioner alleges a POSITA would modify Hellman’s “memory 37” (based
`
`on the teaching of Chou) such that it satisfies the recited “memory of BIOS.”
`
`Petitioner even annotates Hellman’s “memory 37” as being the same BIOS
`
`EEPROM disclosed by Chou.
`
`
`(IPR2020-01609, Paper 1 at 29; see also Sony Petition at 26-31.)
`
`
`
`
`Such a modification is necessary because Petitioner states Hellman’s value
`
`“M” is the claimed “verification structure” that is stored in the “memory of the
`
`14
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`BIOS.” And Petitioner alleges the modification would have been possible because
`
`Atty. Dkt. No.: ANCC0121IPR
`
`EEPROM memory could store BIOS routines and unrelated non-BIOS data (i.e.,
`
`the “verification structure”).
`
`
`
`Moreover, it was common practice to store more than one thing in a
`
`single memory module in a computer. Wolfe Decl. ¶¶112–116, 119–
`
`120.
`
`Because a single EEPROM module would have had sufficient space
`
`to store both the BIOS and other ancillary information, like the license
`
`information from Hellman,
`
`(IPR2020-01609, Paper 1 at 31, emphasis added; see also Sony Petition at 29.)
`
`But Petitioner’s argument has already been considered by this Office when
`
`presented by Microsoft and Samsung with respect to U.S. Patent No. 6,153,835
`
`(“Schwartz”). (Ex. 2024; IPR2020-01184, Paper 1 at 7-30.) As described above,
`
`the result of the combination of Hellman and Chou is (at most) an EEPROM that
`
`contains a BIOS and other information. (IPR2020-01609, Paper 1 at 31; see also
`
`Sony Petition at 29.) This is no different from what was disclosed in Schwartz.
`
`As shown below, Schwartz (unlike Hellman and Chou) even discloses an
`
`EEPROM memory (250 below) that includes both BIOS (309 below) and a license
`
`verification structure (307 below).
`
`15
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`
`The Patent Office had no difficulty finding Schwartz to fall far short of the ’941
`
`
`
`invention. As it explained, “[i]t is NOT agreed that a reasonable examiner would
`
`have found this reference important in determining the patentability of claims 1-
`
`19.” (Ex. 2024 at 165.)
`
`The Patent Office made clear that, “consistent with the specification of the
`
`’941 patent,” memory of the “BIOS is therefore defined by the functional
`
`descriptive material contained within it” (Ex. 2024 at 164) —it is not defined
`
`solely by its physical structure. Simply put, “one skilled in the art” would consider
`
`memory to be “memory of the BIOS” only if it was non-volatile memory that
`
`contains data “used by the functions of BIOS itself,” which the Patent Office
`
`explained includes to “test hardware, start[] the operating system, and support the
`
`16
`
`

`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`transfer of data among hardware devices.”5 (Ex. 2024 at 163-164.) Thus, the mere
`
`Atty. Dkt. No.: ANCC0121IPR
`
`fact that data resides in non-volatile memory “does not necessarily mean that it is
`
`part of the BIOS.” (Ex. 2024 at 164.) More is required to show that a specific
`
`memory area is part of the BIOS. Accordingly, the Patent Office confirmed the
`
`patentability of all claims of the ’941 Patent, explaining:
`
`It is therefore the case that the table created cannot be considered to
`
`be in the BIOS either. Schwartz is therefore merely cumulative to the
`
`art cited by the Examiner during prosecution, insofar as it teaches to
`
`the claim limitations. It is NOT agreed that a reasonable examiner
`
`would have found this reference important in determining the
`
`patentability of claims 1-19.
`
`(Ex. 2024 at 165.)
`
`Indeed, Samsung recently attempted to reassert Schwartz to this Board in its
`
`original IPR petition. (IPR2020-01184, Paper 1 at 7-30.) Patent Owner addressed
`
`Samsung’s usage of Schwartz:
`
`[T]he mere fact that the EEPROM 250a contains a BIOS module does
`
`not mean the entirety of the EEPROM is the memory of the BIOS.
`
`
`5 As noted previously, the Patent Office further explained that this does not
`
`preclude data stored in BIOS from “being also used or modified by programs
`
`located outside of the BIOS, such as applications running in an operating system.”
`
`(Ex. 2024 at 164.)
`
`17
`
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`

`Case No.: IPR2021-00663
`Patent No.: 6,411,941
`
`
`
`Atty. Dkt. No.: ANCC0121IPR
`
`Indeed, this Office has rejected this argument when Microsoft
`
`advanced it in the Ex Parte Reexamination. That makes sense. Such a
`
`remarkably broad construction is inconsistent with the clear meaning
`
`of “memory of the BIOS” and would render effectively all portions of
`
`any physical memory structure that contains a segment dedicated or
`
`used by the BIOS to be memory of the BIOS.
`
`(IPR2020-01184, Paper 7 at 24, emphasis in original.)
`
`The Board agreed. It rejected Samsung’s reliance on the Schwartz reference
`—explaining:
`
`
`In its Petition, Petitioner takes the position that Schwartz’s EEPROM
`
`250a teaches the claimed “non-volatile memory of the BIOS” under
`
`the Federal Circuit’s interpretation in Ancora v. Apple “because it
`
`stores part of BIO