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
`
`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 1 of 18
`
`Hon. Richard A. Jones
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`ANCORA TECHNOLOGIES, INC.
`
`Plaintiff,
`
`v.
`
`Case No. 2:16-cv-01919-RAJ
`
`HTC AMERICA, INC., a Washington
`corporation, HTC CORPORATION, a
`Taiwanese corporation
`
`ANCORA TECHNOLOGIES, INC.’S
`RESPONSIVE MARKMAN BRIEF
`
`Defendant.
`
`REQUEST FOR ORAL ARGUMENT
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 2 of 18
`
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`“BIOS” ................................................................................................................................ 1
`
`A.
`
`HTC’s “BIOS is Memory” Argument is Based on Repeated
`Misrepresentations and Omissions ......................................................................... 1
`
`B.
`
`HTC’s Prosecution History Excerpts Do Not Define BIOS ................................... 2
`
`II.
`
`“USING AN AGENT” ....................................................................................................... 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`“Agent” is not a Substitute for “Means” ................................................................. 6
`
`The Claim Language Provides All Structure for the Claimed Data Storage .......... 7
`
`HTC Already Admitted the Agent Performs Conventional Data Storage .............. 8
`
`There Is A Process Disclosed In The ‘941 Patent For Data Storage ...................... 9
`
`III.
`
`“LICENSE/LICENSE RECORD” .................................................................................... 11
`
`IV.
`
`“ACTING ON THE PROGRAM”.................................................................................... 12
`
`V.
`
`“LICENSE AUTHENTICATION BUREAU” ................................................................. 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
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
` i
`
`
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 3 of 18
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Abbott Labs v. Andrix Pharms.,
`
`473 F.3d 1196 (Fed. Cir. 2007)........................................................................................... 3
`
`Ancora Techs. v. Apple, Inc.,
`
`744 F.3d 732 (Fed. Cir. 2014)............................................................................. 2, 3, 4, 6, 9
`
`Copper Innovations Group, LLC v. Nintendo Co.,
`
`2009 U.S. Dist. LEXIS 130960, *87-*92 (W.D. Penn. 2009) .......................................... 10
`
`Cypress Lake Software, Inc. v. Samsung Elecs. Am. Inc.,
`
`382 F.Supp.3d 586 (E.D. Tex. 2019) .............................................................................. 7, 8
`
`Genband USA v. Metaswitch Networks,
`
`2015 WL 4722185 (E.D. Tex. Aug. 7, 2015) ..................................................................... 8
`
`Hill-Rom Services, Inc. v. Stryker Corp.,
`
`755 F.3d 1367 (Fed. Cir. 2014)......................................................................................... 12
`
`In re Dossel,
`
`115 F.3d 942 (Fed. Cir. 1997)........................................................................................... 10
`
`In re Katz Interactive Call Processing Patent Litig.,
`
`639 F.3d 1303 (Fed. Cir. 2011)......................................................................................... 10
`
`Liner Tech. Corp. v. Impala Linear Corp.,
`
`379 F.3d 1311 (Fed. Cir. 2004)....................................................................................... 7, 8
`
`M2M Solutions LLC v. Sierra Wireless Am., Inc.,
`
`2015 U.S. Dist. LEXIS 134558 (D. Del. 2015) ................................................................ 10
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`
`334 F.3d 1314 (Fed. Cir. 2003)........................................................................................... 5
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2015)................................................................................... 2, 3, 4
`
`Purdue Pharma L.P. v. Endo Pharmaceuticals Inc.,
`
`438 F.3d 1123 (Fed. Cir. 2006)........................................................................................... 5
`
`Shure, Inc. v. Clearone, Inc.,
`
`2019 WL 4014231, *5 (N.D. Ill. 2091) ............................................................................ 10
`
`Synchronoss Techs., Inc. v. Dropbox Inc.,
`
`2017 WL 6059302 (N.D. Cal. Dec. 7, 2017) ...................................................................... 8
`
`TecSec, Inc. v. Adobe Systems, Inc.,
`
`2016 WL 4394603 at *8 (Fed. Cir. Aug. 18, 2016) .......................................................... 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
`
`
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`ii
`
`
`
`
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 4 of 18
`
`
`
`Thorner v. Sony Computer Enter. Am. LLC,
`
`669 F.3d 1362 (Fed. Cir. 2012)........................................................................................... 2
`
`TomTom Inc. v. Adolph,
`
`790 F.3d 1315 (Fed. Cir. 2015)......................................................................................... 12
`
`Typemock, Ltd. v. Telerik, Inc.,
`
`2018 WL 4189692, at *9 (D. Mass. 2018) ......................................................................... 7
`
`ViaStat, Inc. v. Apce Sys./Loral, Inc.,
`
`2013 WL 3927729, at *20 (S.D. Cal. May 29, 2013) ......................................................... 5
`
`VR Optics, LLC v. Peloton Interactive, Inc.,
`
`345 F.Supp.3d 394 (S.D. N.Y 2019)................................................................................... 7
`
`Williamson v. Citrix Online, LLC.,
`
`792 F.3d 1339 (Fed. Cir. 2016)....................................................................................... 6, 7
`
`Zeroclick, LLC v. Apple, Inc.,
`
`891 F.3d 1003 (Fed. Cir. 2018)................................................................................... 6, 7, 8
`
`
`
`Statutes
`
`35 U.S.C. § 112 ................................................................................................................... 6, 7, 8, 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
`
`
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`iii
`
`
`
`
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 5 of 18
`
`
`
`A.
`
`I. “BIOS”
`
`is Memory” Argument
`HTC’s “BIOS
`Misrepresentations and Omissions
`
`is Based on Repeated
`
`HTC falsely states that Ancora does not propose adopting the prior construction of “BIOS.”
`
`(DN60 at 7.) Ancora proposes the exact same construction as that of Judge Gonzalez-Rogers
`
`from the Northern District of California for the ‘941 Patent. (DN59-8 at Apx. 705-708.)
`
`HTC also falsely states that the issue of whether BIOS was memory or code was never
`
`addressed previously. (DN60 at 7: “page 12 of 29”.) Judge Gonzalez-Rogers in the Northern
`
`District of California explained BIOS “is software code. No one disputes that a person of ordinary
`
`skill in the art reading the Claim in this context of the specification and prosecution history would
`
`understand that ‘BIOS’ is the location in the computer where computer code is stored. The
`
`inventive aspect of the ‘941 Patent was to write information onto unused memory in the BIOS area
`
`of a computer.” (DN59-8 at Apx. 707.)
`
`HTC also misrepresents the claims, specification and prosecution history to argue that
`
`BIOS is memory. Claim 1 recites: “a computer including an erasable, non-volatile memory area
`
`of a BIOS of the computer.” The claim then references this memory area of the BIOS. If BIOS is
`
`memory, the claim would read, a “memory area of a [memory]” – which is total non-sense. And,
`
`while HTC on page 13 cites to the portion of the claim that recites “the erasable non-volatile
`
`memory of the BIOS,” HTC fails to advise the Court that HTC agreed this language is properly
`
`construed as “the erasable non-volatile memory area of the BIOS.” (Ex. 17, email from HTC
`
`regarding constructions.)1
`
`The specification is also clear to those skilled in the art that BIOS is not memory. This is
`
`confirmed by all experts and the Federal Circuit. Apple presented expert testimony that “One of
`
`ordinary skill in the art would understand BIOS to mean ‘software routines . . . that handle startup
`
`operations . . . “ (Ex. 18, Kelly Decl. at ¶¶ 30-31.) Ancora submitted similar testimony. (Ex. 19,
`
`Jestice Decl. at ¶¶ 9-14.) Even HTC’s own expert testified: “BIOS is a set of instructions . . ..”
`
`
`1 HTC originally proposed changing the words of the claim “of a BIOS” to “within a BIOS” but
`withdrew that unsupportable proposal. (DN58-1 at 5.)
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 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
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 6 of 18
`
`
`
`(DN59-12 at Apx. 747 at 25:20-21.) The Federal Circuit, after review of the intrinsic record,
`
`explained the ‘941 patent “discloses using the memory space associated with a computer’s basic
`
`input/output system (BIOS)” and there are “‘non-volatile’ areas associated with the BIOS.”
`
`Ancora v. Apple, Inc., 744 F.3d at 733, 739 (Fed. Cir. 2014) (citing the ‘941 Patent at “col. 1, line
`
`46, through col. 2, line 5; id., col. 4, lines 45-48; id., col. 5, lines 19-24.”) The claim term at issue
`
`is “BIOS” which are well-known start-up instructions.
`
`HTC continues its misleading arguments with selective citations to the prosecution history
`
`where BIOS may have been used as shorthand for longer claim language, completely ignoring the
`
`express definition of BIOS present in the intrinsic record.
`
`The Microsoft Computer Dictionary, 5th Edition, 2002 defines BIOS as “the set of
`essential software routines that test hardware at startup, starts the operating system,
`and supports the transfer of data among hardware devices.” This definition is
`consistent with the specification of the ‘941 patent. Since a BIOS is therefore
`defined by the functional descriptive material contained within it, one skilled in the
`art would consider any non-functional descriptive material, such as tables, to be
`part of the BIOS only if it is made and used by the functions of the BIOS itself.
`This does not preclude such material being also used or modified by programs
`located outside of the BIOS, such as applications running in an operating system.
`The fact that a program or table resides in non-volatile memory does not necessarily
`mean that it is part of the BIOS. It is therefore the case that a reasonable examiner
`would only consider a table to be in a BIOS if it were, at a minimum, created by a
`function residing in the BIOS.
`
`(DN59-4 at Apx. 426-427, emphasis added throughout unless otherwise noted.)
`
`Those skilled in the art understand that BIOS is not memory, but instead “the set of
`
`essential software routines” for start-up. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`
`2015) (en banc); Thorner v. Sony Computer Enter. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
`
`(claim terms are generally given their plain and ordinary meaning.) HTC has presented nothing,
`
`let alone compelling evidence, to go against the intrinsic record, all experts, the USPTO, the
`
`Northern District of California, and the Federal Circuit on this issue.
`
`
`B. HTC’s Prosecution History Excerpts Do Not Define BIOS
`
`
`
`HTC then spends four pages making a convoluted argument from the prosecution history
`
`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
`
`arguing that BIOS must be improperly construed as memory. HTC pursues these arguments
`
`
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 2
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 7 of 18
`
`
`
`without any recognition that the Federal Circuit cautions the prosecution history often lacks clarity
`
`for use in claim construction.
`
`[B]ecause the prosecution history represents an ongoing negotiation between the
`PTO and the applicant, rather than the final product of that negotiation, it often
`lacks the clarity of the specification and thus is less useful for claim construction
`purposes. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373,
`1380–82 (Fed.Cir.2002) (the ambiguity of the prosecution history made it less
`relevant to claim construction); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73
`F.3d 1573, 1580 (Fed.Cir.1996) (the ambiguity of the prosecution history made it
`“unhelpful as an interpretive resource” for claim construction).
`
`Phillips, 415 F.3d at 1317. Moreover, terms will only be narrowed from their ordinary meaning
`
`where “the patentee has made clear its adoption of a different definition.” Ancora Techs. v. Apple,
`
`Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). This is far from the case here. See, e.g., Abbott Labs v.
`
`Andrix Pharms., 473 F.3d 1196, 1210-11 (Fed. Cir. 2007) (holding language that the “The
`
`pharmaceutically acceptable polymer is . . .” does “not signify that the description provided is
`
`definitional” for pharmaceutically acceptable polymer.)
`
`HTC takes numerous non-definitional statements out of context. Ancora provided a block
`
`quote of this portion of the prosecution history (DN59-10-11), while HTC prefers to rely on
`
`misleading quotations.2 First, HTC says incorrectly that “the Examiner turned to Ewertz for its
`
`teaching of ‘expanding BIOS memory to store identification and/or configuration data such as
`
`software licenses’” and that this was the “lone limitation missing from Misra.” (DN60 at 9.) HTC
`
`statements are completely out of context and wrong. Ancora explained the information of Ewertz
`
`was “stored in a non-writable, non-erasable area of the BIOS during manufacture,” i.e. ROM
`
`memory. (DN59-3 at Apx. 218.) Ancora explained that its invention used E2PROM or the
`
`“erasable, non-volatile memory area of a BIOS” recited in the claims. Thus, the combination of
`
`Misra and Ewertz was distinguished prior to any additional statements.
`
`
`2 HTC similarly attempted to misrepresent the prosecution history to the Federal Circuit in
`Ancora’s appeal. The Federal Circuit was quick and strong with their criticism of such a practice
`by HTC. (Ex. 20, Transcription of Oral Argument at 11:57-17:07.)
`
`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
`
`
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 3
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 8 of 18
`
`
`
`Second, HTC ignores that Ancora explained that Misra and Ewertz cannot be combined
`
`because one included only BIOS routines, the other including only OS programs. (DN59-3 at Apx.
`
`219.) The ‘941 Patent teaches a combination; the prior art did not. HTC pulled citations from a
`
`portion of the prosecution history, but unfortunately ignores that Federal Circuit examined this
`
`exact portion of the prosecution and held:
`
`The applicants explained that their invention differed from the prior art in that it
`both operated as an application running through an operating system and used the
`BIOS level for data storage and retrieval – a combination that was not previously
`taught and that an ordinary skilled application writer would not employ.
`
`Apple, 744 F.3d at 735. The Federal Circuit did not conclude that BIOS was re-defined as HTC
`
`now proposes. In fact, when viewed in the proper context, this portion of the prosecution history
`
`is not relevant to the definition of BIOS – the exact reason the Federal Circuit warns against HTC’s
`
`use of such prosecution history arguments for claim construction. Phillips, 415 F.3d 1317.
`
`Here, HTC argues: “BIOS memory (1) is not recognized by an operating system as a
`
`storage device, and (2) has no file system.” But, the ‘941 patent recognizes and claims a memory
`
`area associated with BIOS that is used with a verification structure as a storage device for licenses.
`
`See, e.g. Claim 1. HTC is seeking a re-definition of BIOS exactly opposite of the claims of the
`
`‘941 Patent – which can never be correct. HTC fails to acknowledge that Ancora was simply
`
`arguing why “an ordinary skilled artisan” that works with OS-level programs “would not consider
`
`BIOS as a storage medium” for licenses. Ancora never came close to re-defining BIOS.
`
`The prosecution history statements are both about prior art operating systems and are
`
`irrelevant to the definition of BIOS. These statements explain why “an ordinary person skilled in
`
`the art would not consider BIOS as a possible storage medium” for licenses when working through
`
`an operating system. (DN59-3 at Apx. 220.) That is because an “ordinary skilled application
`
`writer” working in an operating system would not consider use of BIOS memory for license
`
`storage. When working with an operating system in 1998 at the time of the invention, BIOS was
`
`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
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 4
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 9 of 18
`
`
`
`not readily available for data storage.3 First, common OS prior art systems did not write to BIOS
`
`memory. Indeed, that is why the claim recites “using an agent” that the specification discloses as
`
`E2PROM manipulation commands – not common OS features – “to set up the verification
`
`structure.” (DN59-2, Ex. 1, at 1:65-2:5, 6:64-66.) Second, at the time of the invention, there was
`
`no “OS file system” in the prior art “associated with the BIOS.” (DN59-3 at Apx. 220.) But again,
`
`the ‘941 Patent changed that by “verifying the program using at the least verification structure” in
`
`the memory associated with the BIOS. (DN59-2 at 7:1-3.) Simply, “OS level application
`
`programmers would not consider the BIOS as a storage medium for license data.” (DN59-3 at
`
`Apx. 220.)
`
`The common meaning of BIOS to those skilled in the art controls. Ancora did not limit or
`
`redefine BIOS in the prosecution history. Any attempt to use the prosecution history to redefine
`
`BIOS must be “clear and unmistakable.” Purdue Pharma L.P. v. Endo Pharmaceuticals Inc., 438
`
`F.3d 1123, 1136 (Fed. Cir. 2006) (citing Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1372-
`
`73 (Fed. Cir. 2005) and Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-26 (Fed. Cir.
`
`2003)). No such redefinition exists here, let alone a re-definition that is clear, unmistakable and
`
`completely unambiguous.
`
`HTC admits as much with its citation to ViaStat, Inc. v. Apce Sys./Loral, Inc., 3:12-cv-
`
`00260-H, 2013 WL 3927729, at *20 (S.D. Cal. May 29, 2013). In ViaStat, the specification
`
`defined “cache” as a “high-speed storage device.” Then, the court evaluated the prosecution
`
`history regarding “DRAM” which is not “cache memory” as described in the specification:
`
`As is well-known in the art, a “cache” or “cache memory” is not just any memory
`but is specialized memory comprising a high-speed storage mechanism. The cache
`memory may be either a reserved section of main memory or an independent high-
`speed storage device. A cache memory is a portion of memory made of high-
`speed RAM (SRAM) instead of the slower and cheaper dynamic RAM (DRAM)
`used for main memory.
`
`
`3 “Although critical to performance, the BIOS is usually invisible to computer users” is part of the
`definition of BIOS in 1998 Microsoft’s Computer Dictionary. (DN58-1 at 9.) The prosecution
`statements go no further as OS users/programmers did not usually use, see or interact with items
`in memory associated with the BIOS.
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 5
`
`
`
`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
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 10 of 18
`
`
`
`Id. While the district court used this DRAM statement supported by the specification, the same
`
`district court also refused to limit the definition of “cache” based on other statements. Id.
`
`Specifically, the accused infringer sought a construction that “cache” memory “requires no active
`
`system capacity,” but those statements pulled from the prosecution history were not “clear and
`
`unmistakable” because those references were not intended to define “cache.” Id.
`
`
`
`At bottom, Ancora was just explaining how its invention “operated as an application
`
`running through an operating system and used the BIOS level for data storage and retrieval” of
`
`licenses – something that did not exist in the prior art. Apple, 744 F.3d at 735. Indeed, the ‘941
`
`Patent has been litigated for over a decade and no party (including Microsoft, Apple, HTC and
`
`others) has ever unearthed such prior art. BIOS should be construed just as in Ancora v. Apple
`
`(DN59-8 at Apx. 708):
`
`“BIOS” is an acronym for Basic Input/Output System. It is the set of essential
`startup operations that run when a computer is turned on, which test hardware, starts
`the operating system, and support the transfer of data among hardware devices.
`
`
`II. “USING AN AGENT”
`
`HTC spends nine pages arguing the term “agent,” but fails to cite the most recent and most
`
`similar Federal Circuit precedent: Zeroclick, LLC v. Apple, Inc., 891 F.3d 1003 (Fed. Cir. 2018).
`
`In Zeroclick, the terms “program” and “code” were not construed under §112, ¶ 6, even though
`
`the claims included functional language. Id. at 1008. This case is no different.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`A.
`
`“Agent” is not a Substitute for “Means”
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`HTC, without citation, argues repeatedly: “One way to overcome the presumption is by
`
`establishing that the claim recites a nonce word for software.” (DN60 at 13, see also 15, 16 and
`
`17: “’Agent’ is a Nonce Word for Software.”) Unfortunately, this appears to be a deliberate mis-
`
`statement of the law. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2016) found
`
`§112, ¶ 6 applied because “’Module’ is a well-known known nonce word that can operate as a
`
`substitute for means.” 792 F.3d at 1350. Williamson explained that: “’module’ is simply a generic
`
`description for software or hardware that performs a specified function” making it a substitute for
`
`
`
`means. Id. But, when HTC cites this portion of Williamson in its brief, HTC states: “Like
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 6
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 11 of 18
`
`
`
`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
`
`‘module,’ ‘agent’ ‘is simply a generic description for software’ that performs a specified function.
`
`Williamson, 792 F.3d at 1350.” (DN 60 at 14.) HTC intentionally removed “or hardware” from
`
`the Williamson holding via selective quotation. The inquiry is whether the term agent “is used in
`
`common parlance as a substitute for means” – not whether “agent” is used as a substitute for
`
`software as HTC proposes. Zeroclick, 891 F.3d at 1009; Typemock, Ltd. v. Telerik, Inc., No. 17-
`
`cv-10274-RGS, 2018 WL 4189692, at *9 (D. Mass. 2018) (“In the computer arts, the term ‘code’
`
`has a definite structure that is understandable to a person of ordinary skill in the art”); VR Optics,
`
`LLC v. Peloton Interactive, Inc., 345 F.Supp.3d 394 (S.D. N.Y 2019) (holding “logic” and “logic
`
`configured to” did not invoke § 112 ¶ 6 because use of the word logic rather than a nonce word
`
`such as “means,” “mechanism,” or “element” supports finding that “logic” conveys some
`
`structure.) “Agent” is a term known in the art to mean “software program or routine.” “Agent” is
`
`not a substitute for “means” – the only and proper inquiry.
`
`B.
`
`The Claim Language Provides All Structure for the Claimed Data Storage
`
`The claim recites data storage. The claim defines what is to be stored, i.e., “a verification
`
`structure.” The claim defines where it is to be stored, i.e., “in the erasable, non-volatile memory
`
`of the BIOS.” The claim specifies that the “agent” performs this data storage. The claim also
`
`defines what is done with the information after it is stored: “verifying the program using at least
`
`the verification structure from the erasable non-volatile memory of the BIOS.” (DN59-2 at 7:1-3.)
`
`The claim further defines the verification: “acting on the program according to the verification.”
`
`(Id. at 7:4-5.) Because the claim provides the only structure needed for a data storage – there is
`
`sufficient structure in the claim to avoid consideration of §112, ¶ 6.
`
`The Federal Circuit’s decision in Liner Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311
`
`(Fed. Cir. 2004) is instructive. In Linear Tech, “the structure connoting term ‘circuit’ is coupled
`
`with a description of the circuit’s operation, sufficient structural meaning generally will be
`
`conveyed to persons of ordinary skill in the art, and § 112 ¶ 6 presumptively will not apply.” Id.
`
`at 1320. HTC cites Cypress Lake Software, Inc. v. Samsung Elecs. Am. Inc., 382 F.Supp.3d 586
`
`(E.D. Tex. 2019) which holds that § 112 ¶ 6 is not invoked for language “instructions to” or “code
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 7
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 12 of 18
`
`
`
`configured to” because the claim’s recitation of the objectives of this code is sufficiently definite
`
`structure citing Linear Tech. Id. at 643. HTC presumably cites Cypress Lake for the proposition
`
`that in another claim “code for” was held to be means language, but that was only because “means
`
`for” was used as the only description in the specification but changed in the claim to “code for.”
`
`Id. at 615-616. HTC also cites Genband USA v. Metaswitch Networks, No. 2:14-cv-33-JRG-RSP,
`
`2015 WL 4722185 (E.D. Tex. Aug. 7, 2015) that holds: “the term ‘agent’ connotes structure to a
`
`person of ordinary skill in the art.” Id. at *17. Genband also explains that because the claimed
`
`“agent” is a distinct component that interacts with other elements, the claimed “agent” recited
`
`structure. Here, the agent stores specific data in a specific location that interacts with other claim
`
`elements. Finally, and importantly, in Genband, the court indicated that “Defendants have not
`
`identified any authority that supports . . . that software limitations are necessarily subject to 35
`
`U.S.C. § 112 ¶ 6 unless coupled with special-purpose hardware.” Id. at *18. HTC and its expert
`
`present the exact same position here also without any legal support. (DN59-12 at 45:3-11.)
`
`Finally, HTC relies on Synchronoss Techs., Inc. v. Dropbox Inc., 16-cv-00119-HSG, 2017
`
`WL 6059302 (N.D. Cal. Dec. 7, 2017) that concerns an apparatus claim. HTC, however, did not
`
`read Synchronoss closely. The court credited expert evidence that showed that “synchronization
`
`agent,” like “module” in Williamson, was understood as “generic descriptors for software or
`
`hardware.” Id. at *10. Here, HTC does not even attempt to establish that “agent” is a nonce word
`
`for “means.” Zeroclick, 891 F.3d at 1009.
`
`C.
`
`
`
`HTC Already Admitted the Agent Performs Conventional Data Storage
`
`HTC conveniently fails to address the dispositive issue. Claim 14 simply recites using an
`
`agent to store data in memory. This perhaps is one of the most simplistic steps in computer
`
`implemented methods. As explained previously, Zeroclick explained that the presumption against
`
`§112, ¶ 6 holds where one skilled in the art would view the claim language “as specific references
`
`to conventional [] code, existing in the prior art at the time of the inventions.” 891 F.3d at 1008.
`
`
`4 HTC spends time discussing non-asserted claims, but it does so under the wrong premise. (DN
`60 at 14.) Whether “agent” is known to those skilled in the art as a software routine does not
`answer the legal inquiry, i.e., whether “agent” is used as a nonce word for “means.”
`
`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
`
`
`
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Tel.: (248) 358-4400
`
`
`
` 8
`
`Ancora Technologies, Inc.’s Responsive Markman Brief
`Case No. C161919-RAJ
`
`
`
`
`
`Nintendo - Ancora Exh. 1074
`
`

`

`Case 2:16-cv-01919-RAJ Document 62 Filed 10/07/19 Page 13 of 18
`
`
`
`That is exactly true here. (DN59-12 at Apx. 747-748; DN59-3 at Apx. 61; DN59-6 at ¶ 59.) HTC
`
`even told the Federal Circuit:
`
`In fact, the specification merely discloses that “using E2PROM manipulation
`commands” allows erasing and modifying the BIOS memory. [‘941 Patent] at 2:1-
`5. Therefore, the patent claims steps which use conventional software on
`conventional computer hardware.
`
`(DN59-16 at Apx. 838.) The use of conventional code for a simple storage command prohibits
`
`application of §112, ¶ 6 – the presumption holds.
`
`D.
`
`There Is A Process Disclosed In The ‘941 Patent For Data Storage
`
`The Court should not concern itself with whether an algorithm or process is disclosed in
`
`the specification and claims because the claim language at issue does not invoke 35 U.S.C. § 112,
`
`¶ 6. Assuming arguendo that his claim limitation is construed under 35 U.S.C. § 112 ¶ 6, the first
`
`step is to identify the claimed function.
`
`The claimed function is “to set up” or to store data. HTC advised the Federal Circuit that:
`
`“For the setting-up step, the claims recite ‘using an agent’ to store license information . . . “
`
`(DN59-16 at Apx. 841.) The specification describes that “[t]he resulting encrypted license record
`
`is stored in another (second) non-volatile section of the BIOS, i.e. E2PROM (or the ROM)”
`
`(DN59-2 at 1:66-2:1), and that a license record “stored in the E2PROM of the first computer.”
`
`(DN59-2 at 2:35-36.) The Federal Circuit twice explained: “The specification discloses a method
`
`. . . to store appropriately