`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,865
`
`09/21/2021
`
`6411941
`
`TO BE DETERMINED
`
`2765
`
`7590
`26694
`VENABLELLP
`P.O. BOX 34385
`WASHINGTON, DC 20043-9998
`
`11/17/2021
`
`EXAMINER
`
`NGUYEN. MINH DIEU T
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`11/17/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`KNOBBE MARTENS OLSON 7 BEAR LLP
`2400 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE, CA 92614
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,865.
`
`PATENT UNDER REEXAMINATION 6411941.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,865
`
`Examiner
`
`Patent Under Reexamination
`
`6411941
`
`Art Unit
`
`AIA (FITF) Status
`
`MINH DIEU T NGUYEN
`
`3992
`
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 09/21/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)0 PTO-892,
`
`b)O
`
`PTO/SB/08,
`
`c)O Other:
`
`1. 0
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`'MINH DIEU NGUYEN/
`Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20211019
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 2
`
`Notice of Pre-A/A or A/A Status
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DECISION GRANTING EX PARTE REEXAMINATION
`
`This is in response to a request for an Ex Parte Reexamination of claims 1-3, 6-
`
`14 and 16 U.S. Patent No. 6,411,941 (hereinafter "the '941 Patent"). The '941 Patent
`
`was issued on June 25, 2002.
`
`A substantial new question of patentability affecting claims 1-3, 6-14 and 16 of
`
`U.S. Patent No. 6,411,941 is raised by the present request for ex parte reexamination
`
`filed September 21, 2021.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in ex parte
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(c).
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving the '941 Patent throughout the course of this reexamination
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 3
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP § 2686 and 2686.04.
`
`PROSECUTION HISTORY
`
`The '941 Patent was originally filed as Application No. 09/164, 777 on October 1,
`
`1998, having claims 1-15. Foreign priority was claimed to Israel Patent Application No.
`
`124571, filed May 21 1998, for which a certified copy in English was concurrently filed.
`
`The Office mailed a non-final office action on October 18, 2000, rejecting claims
`
`1-15. Claims 1-4 and 11-13 were rejected under 35 U.S.C. 102(e) over U.S. Patent No.
`
`5,892,900 to Ginter et al. (hereinafter Ginter). Claims 5, 7, and 8 were rejected under 35
`
`U.S.C. 103(a) over Ginter in view of U.S. Patent No. 5,684,951 to Goldman et al.
`
`(hereinafter Goldman). Claim 9 was rejected under 35 U.S.C. 103(a) over Ginter in view
`
`of Goldman further in view of U.S. Patent No. 5,490,216 to Richardson, Ill (hereinafter
`
`Richardson), although the explanation of the rejection to that claim did not rely upon
`
`Richardson at all. It is noted that the explanation of this rejections also suggested that
`
`claims 6 and 10 should also have been rejected over Ginter. Claims 14 and 15 were not
`
`discussed.
`
`A second non-final rejection was mailed on December 20, 2000 that clarified the
`
`previous office action, stating that claims 1-4, 6, and 10-13 were rejected under 35
`
`U.S.C. 102(e) over Ginter and claims 5, 7-9, 14, and 15 were rejected under 35 U.S.C.
`
`103(a) over Ginter in view of Goldman.
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page4
`
`The Applicant responded on May 21, 2001, amending claim 1, cancelling claims
`
`14 and 15, and adding claims 16-20.
`
`The Office mailed a final rejection on June 22, 2001, rejecting claims 1-13 and
`
`16-20. Claims 1-13 and 16-19 were rejected under 35 U.S.C. 112, first paragraph, for
`
`incorporating new matter. Claim 20 was rejected under 35 U.S.C 112, second
`
`paragraph for being incomplete. Claims 1 -4, 6, and 10-13 were rejected under 35
`
`102(e) over Ginter. Claims 5, 7-9, and 16-20 were rejected under 35 U.S.C. 103 over
`
`Ginter in view of Goldman.
`
`The Applicant filed an amendment on November 14, 2001 with a Request for
`
`Continued Examination (RCE), amending claims 1, 3-7, 9-12, and 16-20 and adding
`
`claims 21-23.
`
`The Office then mailed a non-final rejection on January 15, 2002, rejecting all of
`
`the claims. Claims 11, 12, 15, 16 were rejected under 35 U.S.C. 112, first paragraph for
`
`lacking enablement. Claims 20 and 21 were rejected under 35 U.S.C. 112, second
`
`paragraph for being indefinite. The office action stated that claims 1-23 were rejected
`
`under 35 U.S.C. 103(a) over U.S. Patent No. 6,189,146 to Misra et al. (hereinafter
`
`Misra) in view of Goldman further in view of U.S. Patent No. 5,479,639 to Ewertz et al.
`
`(hereinafter Ewertz). It is noted that only claims 1-13 and 16-23 should have been
`
`rejected in this action, as claims 14 and 15 had been previously cancelled.
`
`The Applicant responded by filing an amendment on February 5, 2002, amending
`
`claims 16 and 20 and cancelling claims 11 and 12, leaving claims 1-10, 13, and 16-23
`
`to be examined.
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 5
`
`A Notice of Allowance was mailed by the Office on March 28, 2002, including an
`
`Examiner's Amendment amending claims 1 and 20. Regarding claims 1-10, 13, and 16-
`
`19, the Examiner noted that,
`
`" .. ,the key distinction between the present invention and the closest prior art, is
`
`that the Misra et al., and Ginter et al. systems and the Ewertz et al. system run at the
`
`operating system level and BIOS level, respectively. More specifically, the closest prior
`
`art systems, singly or collectively, do not teach licensed programs running at the OS
`
`level interacting with a program verification structure stored in the BIOS to verify the
`
`program using the verification structure and having a user act on the program according
`
`to the verification. Further, it is well known to those of ordinary skill of the art that a
`
`computer BIOS is not setup to manage a software license verification structure. The
`
`present invention overcomes this difficulty by using an agent to set up a verification
`
`structure in the erasable, non-volatile memory of the BIOS."
`
`Regarding claims 20-23, the Examiner noted that,
`
`" ... a key distinction between the present invention and the closest prior art, is that the
`
`Misra et al., and Ginter et al. systems and the Ewertz et al. system run at the operating
`
`system level and BIOS level, respectively. More specifically, the closest prior art
`
`systems, singly or collectively, do not teach extracting licensing information from a
`
`software program, encrypting the information and storing it in the BIOS. Further, it is
`
`well known to those of ordinary skill of the art that a computer BIOS is not setup to store
`
`license information. The present invention overcomes this difficulty by utilizing an agent
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 6
`
`to verify the application software program using the license information stored in the
`
`erasable, writable, non-volatile memory of the B JOS."
`
`The claims were renumbered as claims 1-19. None of the claims of the '941
`
`patent have been subject to a final holding of invalidity by a court.
`
`The '941 Patent has been involved in:
`
`Ex parte reexamination by control number 90/010,560 (hereinafter "the '560
`
`Reexam") filed on May 28, 2009. The prior art submitted by the requester, U.S. Patent
`
`No. 5,734,819 to Lewis. The Office states that Lewis did disclose license information
`
`stored in the non-volatile memory of a BIOS (see NIRC dated March 9, 2010, page 4).
`
`However, the system in Lewis uses the license information to verify the device itself, not
`
`a program running on the device. That is, the program in Lewis uses the encrypted
`
`license information in the BIOS memory to verify that the serial number of the device
`
`has not been altered, instead of using the encrypted license information to verify that
`
`the program was licensed. The Office allowed issuance of the reexamination certificate
`
`on March 9, 2010.
`
`Apple Inc. v. Ancora Techs., Inc., Case CBM2016-00023
`
`The Board ordered that the joint motion to terminate CBM2016-00023 is granted,
`
`and this proceeding is terminated as to all parties including Apple and Ancora.
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 7
`
`HTC Corp. v. Ancora Techs., Inc., Case CBM2017-00054
`
`The Board denied institution, finding that the '941 Patent is not a covered
`
`business method patent because it discloses 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). The Board
`
`therefore did not consider the merits of the prior art-based invalidity grounds present in
`
`the CBM petition.
`
`IPR2020-01184: Samsung Electronics Co., Ltd v. Ancora Techs., Inc.
`
`Samsung filed a petition for inter partes review against the '941 Patent on June
`
`25, 2020. The Board denied the Samsung IPR on January 5, 2021, no trial is instituted.
`
`The litigation was settled right before trial.
`
`IPR2020-01609: TCT Mobile (US) Inc. v. Ancora Techs., Inc.
`
`On September 10, 2020, TCT filed a petition for inter partes review against
`
`claims 1-3, 6-14, and 16 of the '941 Patent. On February 16, 2021, the PTAB instituted
`
`inter partes review proceedings in the TCT IPR. On April 5, 2021, the parties filed a
`
`Joint Motion to Terminate Proceedings based on settlement. On June 10, 2021, the
`
`Board ordered an inter partes review is instituted for the following grounds: claims 1-2,
`
`11, 13 are unpatentable under 103(a) as obvious over Hellman and Chou and claims 1-
`
`3, 6-14, 16 are unpatentable under 1 03( a) as obvious over Hellman, Chou and
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 8
`
`Schneck. On July 16, 2021, the Board ordered that the Joint Motion to Terminate filed in
`
`both proceedings (I PR2020-01609 and IPR2021-00663) is granted and terminated both
`
`proceedings due to settlement after institution of trial.
`
`IPR2021-00570: HTC Corp. v. Ancora Techs., Inc.,
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition. The Board denied the institution based
`
`on the majority of General Plastics factors (Factors 1-3, 5, and 6). The Board further
`
`ordered that the Motion for Joinder is denied.
`
`IPR2021-00581: LG Electronics v. Ancora Techs., Inc.,
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other "copycat" I PR petitions filed
`
`based on the TCT instituted petition. The Board denied the institution related to Fintiv
`
`(Factors 2-3 and 4-5). The Board further ordered that the Motion for Joinder is denied.
`
`IPR2021-00583: Samsung Electronics v. Ancora Techs., Inc.,
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other "copycat" I PR petitions filed
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 9
`
`based on the TCT instituted petition. The Board ordered that the proceeding is
`
`terminated in light of the settlement agreement among parties.
`
`IPR2021-00663: Sony Mobile Communications v. Ancora Techs., Inc.,
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other "copycat" I PR petitions filed
`
`based on the TCT instituted petition. Petitioner Sony and Ancora Technologies, Inc.
`
`({Patent Owner'') filed a Joint Motion to Terminate in each of the IPR2020-01609 and
`
`IPR2021-00663. Although the instant inter partes reviews have been instituted, a final
`
`written decision has not entered.
`
`The Board ordered that the Joint Motion to Terminate filed in IPR2020-01609 and
`
`IPR2021-00663 is granted. It is further ordered that both IPR2020-01609 and IPR2021-
`
`00663 are terminated in light of the settlement agreement among parties.
`
`IPR2021-01338: Nintendo Co., v. Ancora Techs., Inc.,
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other "copycat" I PR petitions filed
`
`based on the TCT instituted petition. The proceeding is pending.
`
`IPR2021-01406: Roku Inc., v. Ancora Techs., Inc.,
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 10
`
`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other "copycat" I PR petitions filed
`
`based on the TCT instituted petition. The proceeding is pending.
`
`PROPOSED SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`The Requestor requested reexamination of claims 1-3, 6-14 and 16 of the '941
`
`patent based upon the following prior art patents:
`
`U.S. Patent No. 4,658,093 to Hellman, filed on July 11, 1983, and issued on April
`
`14, 1987 ("Hellman").
`
`U.S. Patent No. 5,892,906 to Chou, filed on July 19, 1996 and issued on April 6,
`
`1999 ("Chou").
`
`U.S. Patent No. 5,933,498 to Schneck, filed on November 5, 1997 and that
`
`claims priority to an application filed on January 11, 1996 and issued on August 3, 1999
`
`("Schneck").
`
`The Requestor proposes rejection as follows:
`
`SNQ1: Claims 1-2, 11, 13 are rendered obvious by Hellman in view of Chou under 35
`
`U.S.C. 103(a).
`
`SNQ2: Claims 1-3, 6-14, 16 are rendered obvious by Hellman in view of Chou and
`
`further in view of Schneck under 35 U.S.C. 103(a).
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 11
`
`ANALYSIS OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Claim Construction
`
`During reexamination, claims are given the broadest reasonable interpretation
`
`consistent with the specification and limitations in the specification are not read into the
`
`claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)).
`
`"license record"
`
`Claim 1 recites "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." (emphasis added).
`
`A claim term should be given its ordinary meaning in the pertinent context, unless
`
`the patentee has made clear its adoption of a different definition or otherwise disclaimed
`
`that meaning. ( Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012).
`
`The Specification expressly discloses that "according to the invention, each
`
`application program that is to be licensed to run on the specified computer, is associated
`
`with a license record." (the '941 Patent, 1 :53-55 (emphasis added). A license record
`
`"consists of author name, program name and number of licensed users (for network)."
`
`(the '941 Patent, 1 :55-57).
`
`Only in the "Detailed Description of a Preferred Embodiment" section, the
`
`Specification describes "the licensed-software-program includes contents used to form a
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 12
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`license-record." (the '941 Patent, 5:25-29, 6: 7-10). Notably, claim 1 itself does not recite
`
`such a requirement.
`
`Therefore, in light of the claim language, the Specification, and the evidence in this
`
`present record, it is determined that a "license record" associated with a licensed program
`
`is "a record having information for verifying that licensed program" for purposes of this
`
`Decision.
`
`A substantial new question of patentability is raised by a cited patent or printed
`
`publication when there is a substantial likelihood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whether or not
`
`the claim is patentable. A substantial new question of patentability is not raised by prior
`
`art presented in a reexamination request if the Office has previously considered (in an
`
`earlier examination of the patent) the same question of patentability as to a patent claim
`
`favorable to the patent owner based on the same prior art patents or printed
`
`publications. In re Swanson, 88 USPQ2d 1196 (Fed. Cir. 2008).
`
`Hellman in view of Chou
`
`Hellman in view of Chou raises a substantial new question of patentability
`
`regarding claims 1-2, 11, 13 as presented in SNQ 1. Hellman in view of Chou raises a
`
`substantial new question by providing teachings that was considered during the
`
`prosecution history of the '941 patent. Although the grounds and prior art references
`
`overlap with the TCT instituted petition, a substantial new question of patentabi lity exists
`
`and is not cumulative of the TCT instituted petition because Ancora settled each
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 13
`
`instituted IPR such that no IPR on the '941 Patent resulted in a final written decision.
`
`Thus, the prior art references are not cumulative of any concluded examination or
`
`concluded review of the patent or pending reexamination.
`
`Accordingly, Hellman in view of Chou are relevant to the reason for allowance of
`
`the claims.
`
`Hellman discloses a method and apparatus in which use of a software package
`
`can be authorized for a particular base unit a specific number of times (Hellman, 4:37-
`
`40).
`
`At..ff~tZA 110¾
`S~Ltl~%
`UMT
`
`FIG._l
`
`Above is Fig. 1 of Hellman illustrates a block diagram of a pay-per-use software
`
`control system (Hellman, 5:1-2). The system includes a base unit 12 which can be a
`
`computer (Hellman, 2:24-27), a software of "software package" 17, and an authorization
`
`billing unit 13. The base unit 12 communicates with authorization billing unit 13 over an
`
`insecure communication channel 11, using transmitter-receiver units 14, 16 (Hellman,
`
`5:39-50). The user at base unit 12 obtains software package 17 by purchasing it at a
`
`store, over telephone line, or in some similar manner (Hellman, 5:51-53). The base unit
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 14
`
`12 sends to authorization billing unit 13 a "user originated request for software use"
`
`(Hellman, 5:57-59). The request includes software name ("the software package to be
`
`used"), serial number ("a serial number, identification number, user name or similar
`
`identifier unique to base unit 12"), N ("the number of additional uses of software
`
`requested"), R ("random number, counter value, or other non-repeating number
`
`generated by the base unit 12"), and billing information (Hellman:5:57-6:2). The
`
`authorization billing unit 13 receives the user's request, generates authorization A for
`
`unit 12 to use software package 17 an additional N times and sends authorization A to
`
`the base unit 12 (Hellman, 6:3-8).
`
`6¾EtlAY
`HASH
`
`""""""""""""""""""~,
`I
`~
`
`Above is Fig. 8 depicts an implementation of base unit 12 during use of a
`
`software package (Hellman, 10:33-34). Software package 17 is connected to base unit
`
`12 and a signal representing software package 17 is operated on by one-way hash
`
`function generator 33 to produce an output signal which represents hash value H
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 15
`
`(Hellman, 10:34-38). Signal H is transmitted to update unit 36 to indicate which software
`
`package is being used (Hellman, 10:38-40). Update unit 36 uses value H as an address
`
`to non-volatile memory 37, which responds with a signal representing M, the number of
`
`uses of software package 17 which are still available (Hellman, 10:40-43).
`
`If value M is greater than 0, then update unit 36 sends a control signal to switch
`
`41 which activates software player 42, allowing it to use software package 17 (Hellman,
`
`10:44-46). Update unit 36 also decrements M to M-1 and stores this as the new value
`
`in address H in non-volatile memory 37 (Hellman, 10:46-49). If M=0, then update unit
`
`36 does not change the contents of nonvolatile memory 37, but neither does it send a
`
`control signal to activate software player 42 (Hellman, 10:50-53). Thus, the user is
`
`prevented from using software package 17 for which he does not have current
`
`authorized use (Hellman, 10:53-54).
`
`Chou discloses an apparatus and a method for discouraging computer theft
`
`(Chou, Abstract). Chou's invention requires that a user enters a unique word or number
`
`related to the particular computer each time the computer is powered up (Chou, 2:11-
`
`14). The technique is implemented with a security routine that is stored in the BIOS
`
`memory (Chou, 2:10-32). The security routine requires verification of a password
`
`entered by the user, or a verification of a quantity read from an externally connected
`
`memory device (Chou, 2:16-18).
`
`Chou also discloses that, at the time of its invention, "[r]ecent changes in the
`
`computer BIOS memory storage devices permit writing data to the BIOS memory,
`
`offering the opportunity to provide password protection within the same memory which
`
`
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 16
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`stores the BIOS routines." (Chou, 1 :63-66). And, "any attempt to delete the protection
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`will result in the BIOS routine being disabled, disabling the boot up process." (Chou,
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`1 :66-2:1). "EEPROM flash devices may be programmed with BIOS routines which
`
`permit the user to enter data without requiring the computer to be returned to the
`
`manufacture." (Chou, 2:2-4). According to Chou, its "invention makes use of these new
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`BIOS memory devices for effecting security measures which discourage theft." (Chou,
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`2:4-7).
`
`Hellman discloses using update unit 36 (acting as the required "agent") to set up
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`a verification structure in non-volatile EEPROM memory 37 (the required "erasable,
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`non-volatile memory") (Hellman, 1 O: 1-4).
`
`The update unit 36 sets up the required "verification structure" in the non-volatile
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`memory 37 at least in the form of storing the value Mat a specific address H for a
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`software program identified by that hash value H. The value M is the required "license
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`record", because it indicates the scope of authorized use - the number of uses, where
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`"M" is the number - for the specific software package 17 identified by hash value H.
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`Storing the value M at the address H constitutes setting up a verification structure
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`because it includes storing a license record at a specific license record location that
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`corresponds to the licensed program ('941 Patent, 1 :59-62; 6:17-21 ).
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`Hellman discloses using value M (the required "license record") that is stored in
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`non-volatile memory 37 to verify software package 17 (the required "program")
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`(Hellman, 10:33-54). In particular, Hellman discloses that when an attempt is made to
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`run software package 17, the value H is generated and sent to the update unit 36, which
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`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 17
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`uses value H as an address in non-volatile memory to verify if a license exists for
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`software package 17 (Hellman, 10:33-54). If a license does exist, update unit 36
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`retrieves the number of remaining authorized uses value M, and a determination is
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`made as to whether the number of authorized uses is greater than zero (Hellman,
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`10:44-54).
`
`Hellman discloses allowing software package 17 to be used if a license record is
`
`found in non-volatile memory 37 and there are authorized uses remaining (Hellman,
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`10:40-49).
`
`There is a substantial likelihood that a reasonable examiner would consider
`
`Hellman in view of Chou important in determining the patentability of at least claim 1.
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`Accordingly, Hellman in view of Chou raises a substantial new question of patentability
`
`as to at least claim 1.
`
`Hellman in view of Chou and Schneck
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`Hellman in view of Chou and Schneck raises a substantial new question of
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`patentability regarding claims 1-3, 6-14, 16 as presented in SNQ 2. Hellman in view of
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`Chou and Schneck raises a substantial new question by providing teachings that was
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`considered during the prosecution history of the '941 patent. Although the grounds and
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`prior art references overlap with the TCT instituted petition, a substantial new question
`
`of patentability exists and is not cumulative of the TCT instituted petition because
`
`Ancora settled each instituted IPR such that no IPR on the '941 Patent resulted in a final
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`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 18
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`written decision. Thus, the prior art references are not cumulative of any concluded
`
`examination or concluded review of the patent or pending reexamination.
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`Accordingly, Hellman in view of Chou and Schneck are relevant to the reason for
`
`allowance of the claims.
`
`Hellman discloses a method and apparatus in which use of a software package
`
`can be authorized for a particular base unit a specific number of times (Hellman, 4:37-
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`40).
`
`FIG_/
`
`Above is Fig. 1 of Hellman illustrates a block diagram of a pay-per-use software
`
`control system (Hellman, 5:1-2). The system includes a base unit 12 which can be a
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`computer (Hellman, 2:24-27), a software of "software package" 17, and an authorization
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`billing unit 13. The base unit 12 communicates with authorization billing unit 13 over an
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`insecure communication channel 11, using transmitter-receiver units 14, 16 (Hellman,
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`5:39-50). The user at base unit 12 obtains software package 17 by purchasing it at a
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`store, over telephone line, or in some similar manner (Hellman, 5:51-53). The base unit
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`12 sends to authorization billing unit 13 a "user originated request for software use"
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`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 19
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`(Hellman, 5:57-59). The request includes software name ("the software package to be
`
`used"), serial number ("a serial number, identification number, user name or similar
`
`identifier unique to base unit 12"), N ("the number of additional uses of software
`
`requested"), R ("random number, counter value, or other non-repeating number
`
`generated by the base unit 12"), and billing information (Hellman:5:57-6:2). The
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`authorization billing unit 13 receives the user's request, generates authorization A for
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`unit 12 to use software package 17 an additional N times and sends authorization A to
`
`the base unit 12 (Hellman, 6:3-8).
`
`i Qt!€ Vi'AV
`I HASH
`
`.. ~~~~~~~~~~'~'~'''~'~
`!~
`
`.............................. ~-.::.~--
`
`Above is Fig. 8 depicts an implementation of base unit 12 during use of a
`
`software package (Hellman, 10:33-34). Software package 17 is connected to base unit
`
`12 and a signal representing software package 17 is operated on by one-way hash
`
`function generator 33 to produce an output signal which represents hash value H
`
`(Hellman, 10:34-38). Signal H is transmitted to update unit 36 to indicate which software
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`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 20
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`package is being used (Hellman, 10:38-40). Update unit 36 uses value H as an address
`
`to non-volatile memory 37, which responds with a signal representing M, the number of
`
`uses of software package 17 which are still available (Hellman, 10:40-43).
`
`If value M is greater than 0, then update unit 36 sends a control signal to switch
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`41 which activates software player 42, allowing it to use software package 17 (Hellman,
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`10:44-46). Update unit 36 also decrements M to M-1 and stores this as the new value
`
`in address H in non-volatile memory 37 (Hellman, 10:46-49). If M=0, then update unit
`
`36 does not change the contents of nonvolatile memory 37, but neither does it send a
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`control signal to activate software player 42 (Hellman, 10:50-53). Thus, the user is
`
`prevented from using software package 17 for which he does not have current
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`authorized use (Hellman, 10:53-54).
`
`Chou discloses an apparatus and a method for discouraging computer theft
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`(Chou, Abstract). Chou's invention requires that a user enters a unique word or number
`
`related to the particular computer each time the computer is powered up (Chou, 2:11-
`
`14). The technique is implemented with a security routine that is stored in the BIOS
`
`memory (Chou, 2:10-32). The security routine requires verification of a password
`
`entered by the user, or a verification of a quantity read from an externally connected
`
`memory device (Chou, 2:16-18).
`
`Chou also discloses that, at the time of its invention, "[r]ecent changes in the
`
`computer BIOS memory storage devices permit writing data to the BIOS memory,
`
`offering the opportunity to provide password protection within the same memory which
`
`stores the BIOS routines." (Chou, 1 :63-66). And, "any attempt to delete the protection
`
`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 21
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`will result in the BIOS routine being disabled, disabling the boot up process." (Chou,
`
`1 :66-2:1). "EEPROM flash devices may be programmed with BIOS routines which
`
`permit the user to enter data without requiring the computer to be returned to the
`
`manufacture." (Chou, 2:2-4). According to Chou, its "invention makes use of these new
`
`BIOS memory devices for effecting security measures which discourage theft." (Chou,
`
`2:4-7).
`
`Schneck discloses a technique that "controls access to and use and distribution
`
`of data" (Schneck, 6:49-50). Schneck's technique can be used to "control how much of
`
`the software's functionality is available" (Schneck, 6:53-56). Schneck prevents the
`
`authorization to use software on one device from being used on another, unauthorized
`
`device, which addresses the "secondary distribution" problem (Schneck, 6:57-62)
`
`Hellman discloses using update unit 36 (acting as the required "agent") to set up
`
`a verification structure in non-volatile EEPROM memory 37 (the required "erasable,
`
`non-volatile memory") (Hellman, 1 O: 1-4).
`
`The update unit 36 sets up the required "verification structure" in the non-volatile
`
`memory 37 at least in the form of st