UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`
`v.
`
`GOOGLE, Inc.,
`
`Plaintiff,
`
`Defendant.
`
`ANCORA TECHNOLOGIES, INC.,
`
`v.
`
`ROKU, Inc.,
`
`Plaintiff,
`
`Defendant.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`CIVIL ACTION NO. 6:21-cv-00735-ADA
`
`JURY TRIAL DEMANDED
`
`CIVIL ACTION NO. 6:21-cv-00737-ADA
`
`JURY TRIAL DEMANDED
`
`CIVIL ACTION NO. 6:21-CV-00738-ADA
`
`v.
`
`JURY TRIAL DEMANDED
`
`NINTENDO CO., LTD., and RETRO
`STUDIOS, INC.,
`
`Defendants.
`
`PLAINTIFF ANCORA TECHNOLOGIES, INC.’S
`DISCLOSURE OF EXTRINSIC EVIDENCE
`
`Pursuant to the Court’s Standing Order Governing Proceedings – Patent Cases and the above-
`
`captioned Parties’ proposed scheduling orders, Plaintiff Ancora Technologies, Inc. (“Ancora”)
`
`discloses the following extrinsic evidence that Ancora may rely on with respect to claim construction
`
`or indefiniteness:
`
`10295059v3/017270
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`Nintendo - Ancora Exh. 1075
`
`

`

`
`
`
`
`DOCUMENT
`Opinion, Ancora Technologies, Inc. v. Apple, Inc., No.
`2013-1378, -1414 (Fed. Cir. 2014)
`Opinion, Ancora Technologies, Inc. v. HTC America, Inc.
`et al., No. 2018-1404 (Fed. Cir. 2018)
`Markman Order, Ancora Technologies, Inc. v. Apple, Inc.,
`No 11-cv-6357 (N.D. Cal. Dec. 31, 2012)
`Decision Denying Institution of CBM Review, HTC
`Corporation et al. v. Ancora Technologies Inc., CBM2017-
`00054 (P.T.A.B. Dec. 1, 2017)
`Inter Partes Reexamination File History, No. 90/010,560
`Declaration of Ian Jestice in Ancora Technologies, Inc. v.
`HTC America, Inc.
`Declaration of Ian Jestice in Ancora Technologies, Inc. v.
`Apple, Inc. (with exhibits)
`May 3, 2012 Deposition of Ian Jestice in Ancora
`Technologies, Inc. v. Apple, Inc. (with exhibits)
`
`BEGINNING BATES NO.
`ANCORA_00003015
`
`ANCORA_00003030
`
`ANCORA_00003043
`
`ANCORA_00003064
`
`ANCORA_00003077
`ANCORA_00003334
`
`ANCORA_00000545
`
`ANCORA_00000594
`ANCORA_00000613
`ANCORA_00000622
`ANCORA_00000637
`ANCORA_00002967
`
`ANCORA_00003340
`ANCORA_00003344
`ANCORA_00003353
`ANCORA_00003357
`ANCORA_00003360
`ANCORA_00003367
`ANCORA_00003373
`ANCORA_00003376
`ANCORA_00049627
`
`ANCORA_00049357
`ANCORA_00049158
`ANCORA_00049547
`ANCORA_00049435
`ANCORA_00049105
`ANCORA_00049110
`ANCORA_00049084
`
`September 11, 2019 Deposition of Ian Jestice in Ancora
`Technologies, Inc. v. HTC
`Merriam Webster’s Collegiate Dictionary (10th Ed.)
`Microsoft Press Computer User’s Dictionary
`Microsoft Computer Dictionary (4th Ed.)
`Newton’s Telecom Dictionary (16th Ed.)
`Encyclopedia of Computer Science (4th Ed.)
`Telecommunications Handbook
`The American Heritage Dictionary (4th Ed.)
`The New Oxford American Dictionary (2001)
`Garfinkle, Forensic feature extraction and cross-drive
`analysis
`Petition for Inter Partes Review No. IPR2021-01338
`Exhibit 1003 to IPR No. IPR2021-01338
`Petition for Inter Partes Review No. IPR2021-01406
`Exhibit 1003 to IPR No. IPR2021-01406
`Markman Order, Ancora Techs. Inc. v. LG Elecs. et al.
`Supp. Markman Order, Ancora v. LG
`Declaration of Ian Jestice, Ancora v. LG et al.
`
`
`
`Ian Jestice:
`
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`2
`
`Additionally, Ancora provides the following summaries of expected expert testimony from
`
`Nintendo - Ancora Exh. 1075
`
`

`

`
`
`
`
`CLAIM TERM
`agent
`(Claim 1)
`
`
`verification structure
`(Claim 1)
`
`
`BIOS
`(Claim 1)
`
`computer
`(Claim 1)
`
`memory of the BIOS /
`
`SUMMARY OF EXPECTED TESTIMONY
`The expected expert testimony by Ian Jestice is summarized in the
`declaration of Ian Jestice in Ancora v. HTC (see, e.g., ¶¶ 5-14), and
`the deposition of Ian Jestice in Ancora v. HTC (see, e.g., p. 16-77).
`Mr. Jestice is expected to opine that as a person of ordinary skill in
`the art at the time of the invention, viewing the claim language in
`the context of the claims, the specification, and the prosecution
`history, he would understand the term “agent” to refer to a “software
`program or routine” and would not understand the term to be
`indefinite.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims, the specification, and the prosecution
`history, he would not understand the term “verification structure”
`to be limited to a “data structure indicating that the program is
`licensed to operate on a specified computer” or “a software / data
`structure indicating that the program is licensed to operate on a
`specified computer.”
`The expected expert testimony by Ian Jestice is summarized in the
`declaration of Ian Justice in Ancora v. Apple (see, e.g., ¶¶ 4-13),
`the deposition of Ian Jestice in Ancora v. HTC (passim), and the
`declaration of Ian Jestice in Ancora v. LG et al. (see, e.g., ¶¶ 5-9).
`Mr. Jestice is also expected to opine that as a person of ordinary
`skill in the art at the time of the invention, viewing the claim
`language in the context of the claims, the specification, and the
`prosecution history, he would understand the plain and ordinary
`meaning of BIOS to refer to “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 hardware, starts the operating system, and support the transfer
`of data among hardware devices” and would not understand the
`term “BIOS” to be limited to PC-compatible computers or to
`require that no file system is associated with the BIOS.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims, the specification, and the prosecution
`history, he would understand the term “computer” to carry its
`plain and ordinary meaning. Mr. Jestice is also expected to opine
`that as a person of ordinary skill in the art at the time of the
`invention, viewing the claim language in the context of the claims
`and the specification, he would understand “computer” to be
`limited to a “PC-compatible computer” or “PC-compatible
`device.”
`The expected expert testimony by Ian Jestice is summarized in the
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`
`
`CLAIM TERM
`erasable, non-volatile
`memory area of [a/the]
`BIOS
`(Claims 1, 7, 9, 12)
`
`
`
`
`program / licensed software
`program
`(Claims 1, 6, and
`dependents)
`
`
`license / license record
`(Claim 1)
`
`
`
`SUMMARY OF EXPECTED TESTIMONY
`declaration of Ian Jestice in Ancora v. Apple, (see, e.g., ¶¶ 4-13,
`and the deposition of Ian Jestice in Ancora v. HTC (see, e.g., pp.
`17-25, 31, 36, 57-68). Mr. Jestice is also expected to opine that as
`a person of ordinary skill in the art at the time of the invention,
`viewing the claim language in the context of the claims, the
`specification, and the prosecution history, he would not
`understand the terms “memory of the BIOS” or “non-volatile
`memory of the BIOS” to refer to a memory “containing the
`BIOS” or a “dedicated area of memory where the BIOS is stored”
`as it includes memory accessed by BIOS and/or that BIOS uses.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims, the specification, and the prosecution
`history, he would understand the term “program” to mean “a set
`of instructions for a computer.” A summary of Mr. Jestice’s
`expected testimony is also included in the deposition of Ian
`Jestice in Ancora v. Apple, (see, e.g., p. 32). Mr. Jestice is also
`expected to opine that as a person of ordinary skill in the art at the
`time of the invention, viewing the claim language in the context
`of the claims and the specification, he would not understand the
`term as being limited to: “operating system or application
`instructions, separate from the BIOS, that can be executed by a
`computer,” “a set of instructions in the volatile memory that can
`be executed by an operating system of a computer,” or “a set of
`instructions in the volatile memory that can be executed by an
`operating system of a computer.” Neither the specification nor the
`prosecution history supports Defendants’ construction and the
`constructions are contrary to prior courts’ constructions of this
`term.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims, the specification, and the prosecution
`history, he would understand the term “license” to carry its plain
`and ordinary meaning as an “authorization” or “permission” to
`run. A summary of Mr. Jestice’s expected testimony is also
`included in the deposition of Ian Jestice in Ancora v. HTC
`(passim). Mr. Jestice is also expected to opine that as a person of
`ordinary skill in the art at the time of the invention, viewing the
`claim language in the context of the claims and the specification,
`he would understand “license” or “license record” as not being
`limited to: “permission authorizing operation of a program on a
`specified computer,” a “record of a license, where the record
`consists of author name, program name, and number of licensed
`users,” “a record of a license, where the record contains data
`associated with a licensed program with information for verifying
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`
`
`CLAIM TERM
`
`operation within a license
`(Claim 1)
`
`first non-volatile memory
`area of the computer
`(claim 7)
`
`the erasable second non-
`volatile memory area of the
`BIOS – No antecedent basis
`(claim 16)
`
`
`volatile memory
`(claim 1)
`
`
`non-volatile memory
`(claim 1)
`
`
`pseudo unique key
`(claim 7, 9, 12, and
`
`SUMMARY OF EXPECTED TESTIMONY
`that a program is licensed for use on a specified computer,” or “a
`record of a license, where the record consists of author name,
`program name and number of licensed users, with information for
`verifying that a program is licensed for use on a specified
`computer.”
`Mr. Jestice is also expected to opine that as a person of ordinary
`skill in the art at the time of the invention, viewing the claim
`language in the context of the claims and the specification, he
`would understand “operation within a license” as not being
`limited to: “restricting software operation to a licensed
`computer.”
`Mr. Jestice is expected to opine that this term should be given its
`plain and ordinary meaning, and that a person of ordinary skill in
`the art, viewing the claim language in the context of the claims,
`the specification, and the prosecution history, would not
`understand “first non-volatile memory area of the computer” to be
`limited to a “non-volatile memory that is different from the
`erasable, non-volatile memory of the BIOS.”
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims and the specification, he would
`understand “the erasable second non-volatile memory area of the
`BIOS” as referring to “another (second) non-volatile section of
`the BIOS.” See, e.g., ’941 Patent at 1:59–2:9; 2:10-11; 2:62–3:3;
`3:18-42; 3:62–4:5; 4:49–54.
`The expected expert testimony by Ian Jestice is summarized in the
`declaration of Ian Jestice in Ancora v. Apple, (see, e.g., ¶¶ 4-8),
`and the deposition of Ian Jestice in Ancora v. Apple (see, e.g., pp.
`7-10, 12-13, 15, 21, 26-32). Mr. Jestice is expected to opine that
`as a person of ordinary skill in the art at the time of the invention,
`viewing the claim language in the context of the claims and the
`specification, he would understand “volatile memory” to mean
`“memory whose data is not maintained when the power is
`removed.
`The expected expert testimony by Ian Jestice is summarized in the
`declaration of Ian Jestice in Ancora v. Apple, (see, e.g., ¶¶ 4-8),
`and the deposition of Ian Jestice in Ancora v. Apple (see, e.g., pp.
`7-10, 12-13, 15, 21, 26-32). Mr. Jestice is expected to opine that
`as a person of ordinary skill in the art at the time of the invention,
`viewing the claim language in the context of the claims and the
`specification, he would understand “non-volatile memory” to
`refer to “memory whose data is maintained when the power is
`removed or voltage is too low.”
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
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`
`
`CLAIM TERM
`dependents)
`
`accommodating data
`(Claim 1)
`
`license authentication
`bureau
`(Claim 2)
`
`SUMMARY OF EXPECTED TESTIMONY
`in the context of the claims and the specification, he would not
`understand “pseudo unique key” as being limited to a “key that
`uniquely identifies the computer to at least an acceptably low
`probability of a successful unauthorized transfer of licensed
`software between two computers” nor “an identification code for
`the host computer that uniquely identifies the computer to at least
`an acceptably low probability of a successful unauthorized
`transfer of licensed software between two computers.” Neither the
`specification nor the prosecution history supports Defendants’
`construction.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims and the specification, he would not
`understand “accommodating data” as being indefinite.
`Mr. Jestice is expected to opine that as a person of ordinary skill
`in the art at the time of the invention, viewing the claim language
`in the context of the claims and the specification, he would not
`understand “license authentication bureau” to be limited to a
`“telecommunications accessible processor that verifies the license
`record” or “a telecommunications accessible processor that
`formats, encrypts, and verifies the license record.”
`
`
`
`
`The above list of evidence and summary of expert testimony is based on information that is
`
`currently available to Ancora. Ancora reserves the right to supplement, amend, and/or modify this
`
`identification of extrinsic evidence and testimony, including as a result of Defendants’ extrinsic
`
`evidence and/or arguments or contentions.
`
`
`
`
`
`Date: January 13, 2022
`
`
`
`/s/ Steven M. Seigel
`Charles Ainsworth
`State Bar No. 00783521
`Robert Christopher Bunt
`State Bar No. 00787165
`PARKER, BUNT & AINSWORTH, P.C.
`100 E. Ferguson, Suite 418
`Tyler, TX 75702
`903/531-3535
`E-mail: charley@pbatyler.com
`E-mail: rcbunt@pbatyler.com
`
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`
`
`Lexie G. White (Texas 24048876)
`SUSMAN GODFREY LLP
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Tel: (713) 651-9366
`Fax: (713) 654-6666
`lwhite@susmangodfrey.com
`
`Andres Healy (pro hac vice)
`Steven M. Seigel (pro hac vice)
`SUSMAN GODFREY LLP
`1201 Third Avenue, Suite 3800
`Seattle, Washington 98101
`Tel: (206) 516-3880
`Fax: 206-516-3883
`ahealy@susmangodfrey.com
`sseigel@susmangodfrey.com
`
`COUNSEL FOR PLAINTIFF ANCORA
`TECHNOLOGIES, INC.
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`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 13, 2022, I electronically served the foregoing by email
`
`to the counsel of record listed below:
`
`Brian C. Banner (TX Bar No. 24059416)
`bbanner@sgbfirm.com
`Truman H. Fenton (TX Bar No. 24059742)
`tfenton@sgbfirm.com
`Darryl J. Adams (TX Bar No. 00796101)
`dadams@sgbfirm.com
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Ave., Suite 1650
`Austin, TX 78701
`Telephone: (512) 402-3550
`Facsimile: (512) 402-6865
`
`Robert W. Unikel (Pro Hac Vice)
`robertunikel@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, 45th Floor
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Elizabeth Brann (Pro Hac Vice)
`elizabethbrann@paulhastings.com
`Ariell N. Bratton (Pro Hac Vice)
`ariellbratton@paulhastings.com
`Sachin Bhatmuley (Pro Hac Vice)
`sachinbhatmuley@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`Robert R. Laurenzi (Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`
`David N. Deaconson
`Texas Bar Card No. 05673400
`deaconson@pakislaw.com
`PAKIS, GIOTES, PAGE & BURLESON, P.C.
`P.O. BOX 58
`Waco, Texas 76703-00058
`(254) 297-7300
`(254) 297-7301 Facsimile
`
`Jennifer D. Bennett (Pro Hac Vice)
`jennifer.bennett@dentons.com
`DENTONS US LLP
`One Market Plaza
`Spear Tower, 24th Floor
`San Francisco, CA 94105
`Telephone: (415) 267-4000
`Facsimile: (415) 267-4198
`
`Kirk R. Ruthenberg (Pro Hac Vice)
`kirk.ruthenberg@dentons.com
`DENTONS US LLP
`1900 K Street, NW
`Washington, DC 20006
`Telephone: (202) 496-7500
`Facsimile: (202) 496-7756
`
`Nah Eun Kim (Pro Hac Vice)
`nah-eun.kim@dentons.com
`Dentons US LLP
`303 Peachtree St NE Suite 5300
`Atlanta, GA 30308
`Telephone: 404-527-4000
`
`Counsel for Defendant Roku, Inc.
`
`Jose C. Villarreal, State Bar No. 24003113
`JVillarreal@perkinscoie.com
`PERKINS COIE LLP
`500 W. 2nd Street, 19th Floor
`Austin, TX 78701
`
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`
`
`Joshua Yin (Pro Hac Vice)
`joshuayin@paulhastings.com
`PAUL HASTINGS LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
`
`Attorneys for Defendant Google LLC
`
`
`
`Telephone: 737.256.6100
`Facsimile: 737.256.6300
`
`Jerry A. Riedinger (Pro Hac Vice)
`JRiedinger@perkinscoie.com
`Theresa H. Nguyen (Pro Hac Vice)
`RNguyen@perkinscoie.com
`PERKINS COIE LLP
`1201 Third Avenue, 49th Floor
`Seattle, WA 98101
`Telephone: 206.359.8000
`Facsimile: 206.359.9000
`
`Kyle R. Canavera (Pro Hac Vice)
`KCanavera@perkinscoie.com
`PERKINS COIE LLP
`1452 El Camino Real, Suite 300
`San Diego, CA92130
`Telephone: 858.720.5700
`Facsimile: 858.720.5799
`
`Tara Kurtis (Pro Hac Vice)
`TKurtis@perkinscoie.com
`PERKINS COIE LLP
`131 South Dearborn St. Suite 1700
`Chicago, IL 60603
`Telephone: 312.324.8400
`Facsimile: 312.324.9400
`
`Attorneys for Nintendo Co., Ltd. and Retro
`Studios, Inc.
`
`/s/ Steven M. Seigel
`Steven M. Seigel
`
`
`
`
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