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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NINTENDO CO., LTD., and
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`NINTENDO OF AMERICA INC.,
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`Petitioners,
`
`v.
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`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
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`
`
`
`
`
`
`
`PTAB Case No. IPR2021-01338
`Patent No. 6,411,941 B1
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`
`
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`
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`DECLARATION OF ANDREW WOLFE IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,411,941
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`Nintendo - Ancora Exh. 1003
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`TABLE OF CONTENTS
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`
`
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`A. Qualifications ....................................................................................... 2
`1.
`Education ................................................................................... 2
`2. Work Experience ........................................................................ 2
`3.
`Curriculum Vitae ........................................................................ 6
`B. Materials Reviewed .............................................................................. 7
`C.
`Level of Ordinary Skill in the Art ........................................................ 7
`D.
`Summary of Opinions .......................................................................... 9
`II. OVERVIEW OF THE TECHNOLOGY ........................................................ 9
`A.
`Priority Date of the Claims ................................................................... 9
`B. Overview of Relevant Technology When the ’941 Patent Was
`Filed .................................................................................................... 10
`1.
`Software Licenses .................................................................... 10
`2.
`Computer BIOS........................................................................ 12
`The ’941 Patent .................................................................................. 14
`C.
`Claim Construction ............................................................................ 21
`D.
`III. OVERVIEW OF THE PRIOR ART ............................................................ 21
`A. Hellman .............................................................................................. 21
`B.
`Chou ................................................................................................... 31
`C.
`Schneck............................................................................................... 35
`IV. UNPATENTABILITY OF THE ’941 PATENT CLAIMS ......................... 42
`A.
`Standards for Invalidity ...................................................................... 42
`B.
`Claim 1 ............................................................................................... 43
`Preamble: “A method of restricting software operation
`1.
`within a license for use with a computer including an
`erasable, non-volatile memory area of a BIOS of the
`computer, and a volatile memory area; the method
`comprising the steps of:” ......................................................... 43
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`2.
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`3.
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`4.
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`5.
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`Element 1.a: “selecting a program residing in the volatile
`memory” ................................................................................... 55
`Element 1.b: “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” ........................................ 60
`Element 1.c: “verifying the program using at least the
`verification structure from the erasable non-volatile
`memory of the BIOS, and” ...................................................... 69
`Element 1.d: “acting on the program according to the
`verification.” ............................................................................ 71
`Claim 2: “A method according to claim 1, further comprising
`the steps of: establishing a license authentication bureau.” .............. 71
`Claim 3 ............................................................................................... 72
`Preamble: “A method according to claim 2, wherein
`1.
`setting up a verification structure further comprising the
`steps of:” .................................................................................. 72
`Element 3.a: “establishing, between the computer and
`the bureau, a two-way data-communications linkage;” ........... 73
`Element 3.b: “transferring, from the computer to the
`bureau, a request-for-license including an identification
`of the computer and the license-record’s contents from
`the selected program;” ............................................................. 73
`Element 3.c: “forming an encrypted license-record at the
`bureau by encrypting parts of the request-for-license
`using part of the identification as an encryption key;” ............ 77
`Element 3.d: “transferring, from the bureau to the
`computer, the encrypted license-record; and” ......................... 79
`Element 3.e: “storing the encrypted license record in the
`erasable non-volatile memory area of the BIOS.” ................... 79
`Claim 6: “A method according to claim 1 wherein selecting a
`program includes the steps of: establishing a licensed-software-
`program in the volatile memory of the computer wherein said
`licensed-software-program includes contents used to form the
`license-record.” ................................................................................... 80
`
`2.
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`3.
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`4.
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`5.
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`6.
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`C.
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`D.
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`E.
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`2.
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`3.
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`2.
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`3.
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`Claim 7 ............................................................................................... 81
`Preamble: “A method according to claim 6 wherein
`1.
`using an agent to set up the verification structure includes
`the steps of:” ............................................................................. 81
`Element 7.a: “establishing or certifying the existence of
`a pseudo-unique key in a first non-volatile memory area
`of the computer; and” ............................................................... 81
`Element 7.b: “establishing at least one license-record
`location in the first nonvolatile memory area or in the
`erasable, non-volatile memory area of the BIOS.” .................. 83
`Claim 8 ............................................................................................... 84
`Preamble: “A method according to claim 6 wherein
`1.
`establishing a license-record includes the steps of:” ............... 84
`Element 8.a: “forming a license-record by encrypting of
`the contents used to form a license-record with other
`predetermined data contents, using the key; and” ................... 84
`Element 8.b: “establishing the encrypted license-record
`in one of the at least one established license-record
`locations.” ................................................................................ 85
`Claim 9 ............................................................................................... 86
`Preamble: “A method according to claim 7 wherein
`1.
`verifying the program includes the steps of:” .......................... 86
`Element 9.a: “encrypting the licensed-software-
`program's license-record contents from the volatile
`memory area or decrypting the license-record in the
`erasable, non-volatile memory area of the BIOS, using
`the pseudo-unique key; and” .................................................... 86
`Element 9.b: “comparing the encrypted licenses-
`software-program’s license-record contents with the
`encrypted license-record in the erasable, non-volatile
`memory area of the BIOS, or comparing the license-
`software-program's license-record contents with the
`decrypted license-record in erasable non-volatile memory
`area of the BIOS.” .................................................................... 87
`
`F.
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`G.
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`H.
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`2.
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`3.
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`I.
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`J.
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`Claim 10: “A method according to claim 9 wherein acting on
`the program includes the step: restricting the program's
`operation with predetermined limitations if the comparing
`yields non-unity or insufficiency.” ..................................................... 89
`Claim 11: “A method according to claim 1 wherein the volatile
`memory is a RAM.” ........................................................................... 90
`Claim 12: “The method of claim 1, wherein a pseudo-unique
`key is stored in the non-volatile memory of the BIOS.” .................... 90
`Claim 13: “The method of claim 1, wherein a unique key is
`stored in a first non-volatile memory area of the computer.” ............ 93
`M. Claim 14: “The method according claim 13, wherein the step
`of using the agent to set up the verification record, including the
`license record, includes encrypting a license record data in the
`program using at least the unique key.” ............................................. 94
`Claim 16: “The method according to claim 13, wherein the
`step of verifying the program includes a decrypting the license
`record data accommodated in the erasable second non-volatile
`memory area of the BIOS using at least the unique key.” ................. 95
`
`K.
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`L.
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`N.
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`LIST OF APPENDICES
`
`
`Appendix A
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`Curriculum Vitae of Andrew Wolfe, Ph.D.
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`Appendix B
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`Documents Cited
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`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`I.
`
`INTRODUCTION
`I, Andrew Wolfe, have been retained by Petitioner Nintendo of
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`1.
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`America Inc. (“Petitioner”) to investigate and opine on certain issues relating to
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`United States Patent No. 6,411,941 (“the ’941 patent”) in their Petition for Inter
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`Partes Review of that patent. The Petition requests that the Patent Trial and Appeal
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`Board (“PTAB” or “Board”) review and cancel claims 1-3, 6-14, and 16 of the ’941
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`patent.
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`2.
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`The opinions set forth in this report are based on my personal
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`knowledge, my professional judgment, and my analysis of the materials and
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`information referenced in this report and its exhibits.
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`3.
`
`I am being compensated for consulting services including time spent
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`testifying at any hearing that may be held. I am also reimbursed for reasonable and
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`customary expenses associated with my work in this case. I receive no other forms
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`of compensation related to this case. My compensation does not depend on the
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`outcome of this inter partes review or the co-pending district court litigation, and I
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`have no other financial interest in this inter partes review.
`
`4.
`
`I understand that the ’941 patent has been assigned to Ancora
`
`Technologies, Inc.
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`5.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents and
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`information that may be produced, as well as testimony from depositions that have
`
`not yet been taken.
`
`A. Qualifications
`Education
`1.
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and
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`6.
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`Computer Science from The Johns Hopkins University. In 1987, I received an M.S.
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`degree in Electrical and Computer Engineering from Carnegie Mellon University.
`
`In 1992, I received a Ph.D. in Computer Engineering from Carnegie Mellon
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`University. My doctoral dissertation proposed a new approach for the architecture
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`of a computer processor.
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`2. Work Experience
`I have more than 35 years of experience as a computer architect,
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`7.
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`computer system designer, personal computer graphics designer, educator, and
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`executive in the electronics industry.
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`8.
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`In 1983, I began designing touch sensors, microprocessor-based
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`computer systems, and I/O (input/output) cards for personal computers as a senior
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`design engineer for Touch Technology, Inc. During the course of my design projects
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`with Touch Technology, I designed I/O cards for PC-compatible computer systems,
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`including the IBM PC-AT, to interface with interactive touch-based computer
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`terminals that I designed for use in public information systems. I continued
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`designing and developing related technology as a consultant to the Carroll Touch
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`division of AMP, Inc., where in 1986 I designed one of the first custom touch-screen
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`integrated circuits. I designed the touch/pen input system for the Linus WriteTop,
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`which many believe to be the first commercial tablet computer.
`
`9.
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`From 1986 through 1987, I designed and built a high-performance
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`computer system as a student at Carnegie Mellon University. From 1986 through
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`early 1988, I also developed the curriculum and supervised the teaching laboratory
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`for processor design courses.
`
`10.
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`In the latter part of 1989, I worked as a senior design engineer for ESL-
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`TRW Advanced Technology Division. While at ESL-TRW, I designed and built a
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`bus interface and memory controller for a workstation-based computer system, and
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`also worked on the design of a multiprocessor system.
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`11. At the end of 1989, I (along with some partners) reacquired the rights
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`to the technology I had developed at Touch Technology and at AMP and founded
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`The Graphics Technology Company. Over the next seven years, as an officer and a
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`consultant for The Graphics Technology Company, I managed the company's
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`engineering development activities and personally developed dozens of touch screen
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`sensors, controllers, and interactive touch-based computer systems.
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`12.
`
`I have consulted, formally and informally, for a number of fabless
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`
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`semiconductor companies. In particular, I have served on the technical advisory
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`boards for two processor design companies: BOPS, Inc., where I chaired the board;
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`and Siroyan Ltd., where I served in a similar role for three networking chip
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`companies—Intellon, Inc., Comsilica, Inc., and Entridia, Inc.—and one 3D game
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`accelerator company, Ageia, Inc.
`
`13.
`
`I have also served as a technology advisor to Motorola and to several
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`venture capital funds in the U.S. and Europe. Currently, I am a director of Turtle
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`Beach Corporation, providing guidance in its development of premium audio
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`peripheral devices for a variety of commercial electronic products.
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`14. From 1991 through 1997, I served on the Faculty of Princeton
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`University as an Assistant Professor of Electrical Engineering. At Princeton, I taught
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`undergraduate and graduate-level courses in Computer Architecture, Advanced
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`Computer Architecture, Display Technology, and Microprocessor Systems, and
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`conducted sponsored research in the area of computer systems and related topics. I
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`was also a principal investigator for DOD research in video technology and a
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`principal investigator for the New Jersey Center for Multimedia Research. From
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`1999 through 2002, while a Consulting Professor, I taught a Computer Architecture
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`course to both undergraduate and graduate students at Stanford University. At
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`Princeton, I received several teaching awards, both from students and from the
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`School of Engineering. I have also taught advanced microprocessor architecture to
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`industry professionals in seminars sponsored by the Institute of Electrical and
`
`Electronics Engineers (“IEEE”) and the Association for Computing Machinery
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`(“ACM”). I am currently a lecturer at Santa Clara University teaching courses on
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`Microprocessor Systems, Real-Time Computing, and Mechatronics.
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`15. From 1997 through 2002, I held a variety of executive positions at a
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`publicly-held fabless semiconductor company originally called S3, Inc. and later
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`called SonicBlue Inc. I held the positions of Chief Technology Officer, Vice
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`President of Systems Integration Products, Senior Vice President of Business
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`Development, and Director of Technology, among others. At the time I joined S3,
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`the company supplied graphics accelerators for more than 50% of the PCs sold in
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`the United States. At S3 I supervised the design of several PC graphics accelerators.
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`During my time at SonicBlue we launched more than 30 new consumer electronics
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`products including devices to support copy-protected video and many of the first
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`commercial products to support copy-protected internet audio content.
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`16.
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`I have published more than fifty peer-reviewed papers in computer
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`architecture and computer systems and IC design. I also have chaired IEEE and
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`ACM conferences in microarchitecture and integrated circuit design and served as
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`an associate editor for IEEE and ACM journals. I served on the IEEE Computer
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`Society Awards committee. I am a Senior Member of IEEE and a Member of ACM.
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`I am a named inventor on at least fifty-six U.S. patents and thirty-seven foreign
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`patents, which are listed in my curriculum vitae.
`
`17.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International Conference
`
`on Multimedia. From 1990 through 2005, I have also been an invited speaker on
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`various aspects of technology and the PC industry at numerous industry events
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`including the Intel Developer’s Forum, Microsoft Windows Hardware Engineering
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`Conference, Microprocessor Forum, Embedded Systems Conference, Comdex, and
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`Consumer Electronics Show, as well as at the Harvard Business School and the
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`University of Illinois Law School. I have been interviewed on subjects related to
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`computer graphics and video technology and the electronics industry by publications
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`such as the Wall Street Journal, New York Times, Los Angeles Times, Time,
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`Newsweek, Forbes, and Fortune as well as on CNN, NPR, and the BBC. I have also
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`spoken at dozens of universities including MIT, Stanford, University of Texas,
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`Carnegie Mellon University, UCLA, University of Michigan, Rice University, and
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`Duke University.
`
`Curriculum Vitae
`3.
`18. A copy of my curriculum vitae is attached as Appendix A to this
`
`declaration.
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`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`B. Materials Reviewed
`19. My opinions expressed in this declaration are based on documents and
`
`materials identified in this declaration, including the ’941 patent, the prior art
`
`references and background materials discussed in this declaration, and the other
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`references specifically identified in this declaration. I have considered these
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`materials in their entirety, even if only portions are discussed here.
`
`20.
`
`I have also relied on my own experience and expertise in digital security,
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`software licensing, and computer architecture.
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`C. Level of Ordinary Skill in the Art
`I am not an attorney and offer no legal opinions. I have been informed
`21.
`
`about certain aspects of the law for purposes of my analyses and opinions.1
`
`22.
`
`I understand that in analyzing questions of invalidity, the perspective
`
`of a person having ordinary skill in the art (“POSA”) is often implicated, and the
`
`Board may need assistance in determining that level of skill.
`
`23.
`
`I understand that the claims and written description of a patent must be
`
`understood from the perspective of a POSA. I have been informed that the following
`
`
`
`
`
`1 I understand that the patent laws were amended by the America Invents Act
`(AIA), but that the earlier statutory requirements still apply to pre-AIA patents. I
`have been informed that the ’941 Patent is a pre-AIA patent, so the pre-AIA
`requirements control. Unless otherwise stated, my understanding of the law about
`patent invalidity as set forth in this declaration relates to the pre-AIA requirements.
`
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`factors may affect the level of skill of a POSA: (1) the educational level of the
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`inventor; (2) the type of problems encountered in the art; (3) the prior-art solutions
`
`to those problems; (4) the rapidity with which innovations are made; (5) the
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`sophistication of the technology; and (6) the educational level of active workers in
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`the field. A person of ordinary skill in the art is also a person of ordinary creativity
`
`in the art.
`
`24. Based on my experience in digital security, software licensing, and
`
`computer architecture, as well as my reading of the ’941 Patent, it is my opinion that
`
`a person of ordinary skill with respect to the subject matter of the ’941 Patent at the
`
`time of the alleged invention would have had at least a B.S. degree in computer
`
`science, computer engineering, or electrical engineering (or equivalent experience)
`
`and would have had at least two years of experience with computer science and
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`computer engineering, including information encryption, computer architecture, and
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`firmware programming. This definition is approximate, and additional educational
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`experience in computer science and computer engineering could make up for less
`
`work experience and vice versa.
`
`25.
`
`I am a person of at least ordinary skill in the art and was so on the date
`
`to which the ’941 Patent claims priority (May 21, 1998). As shown by my
`
`qualifications and my curriculum vitae attached as Appendix A, I am aware of the
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`knowledge and skill possessed by a person of ordinary skill in the art at the time of
`
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`the alleged invention claimed by the ’941 Patent. In performing my analysis, I have
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`applied the standard set forth above.
`
`D.
`26.
`
`Summary of Opinions
`I have reviewed and analyzed the ’941 Patent (Ex. B-1, same as Ex.
`
`1001 in the Petition) as well as prior art references Hellman (U.S. Patent 4,658,093)
`
`(Ex. B-3, same as Ex. 1004 in the Petition), Chou (U.S. Patent 5,892,906) (Ex. B-4,
`
`same as Ex. 1005 in Petition), and Schneck (U.S. Patent 5,933,498) (Ex. B-5, same
`
`as Ex. 1006 in Petition).
`
`27. Based on my review and analysis, it is my opinion that claims 1-2, 11,
`
`and 13 of the ’941 Patent are invalid as obvious based on Hellman in view of Chou.
`
`Based on my review and analysis, it is also my opinion that claims 1-3, 6-14, and 16
`
`of the ’941 Patent are invalid as obvious based on Hellman in view of Chou and
`
`Schneck.
`
`II. OVERVIEW OF THE TECHNOLOGY
`Priority Date of the Claims
`A.
`28.
`I have been informed that a U.S. patent application may claim the
`
`benefit of the filing date of an earlier patent application if the earlier patent
`
`application disclosed each limitation of the invention claimed in the later-filed U.S.
`
`patent application. I have also been informed that priority is determined on a claim-
`
`by-claim basis so that certain claims of a patent may be entitled to the priority date
`
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`of an earlier-filed patent application even if other claims of the same patent are not
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
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`entitled to that priority date.
`
`29.
`
`I have also been informed that for patent applications filed before
`
`March 16, 2013, a patented claim is invalid if the claimed invention was patented or
`
`described in a printed publication in any country more than one year before the
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`effective filing date of the claim, regardless of when the applicant conceived of the
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`claimed invention.
`
`30.
`
`I understand that the ’941 Patent claims a priority date of May 21, 1998.
`
`B. Overview of Relevant Technology When the ’941 Patent Was
`Filed
`Software Licenses
`1.
`31. By the time of the ’941 Patent’s priority date in 1998, the field of
`
`software licensing was well-developed. Since at least the 1980s, practitioners in the
`
`field had widely recognized the new risks to software piracy introduced by the
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`transformations to digital media.
`
`32. Many entities recognized that one such risk was “copy protection” or
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`“secondary distribution.” Secondary distribution contrasted with, for example,
`
`preventing an unauthorized user from obtaining access to a software program in the
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`first place. Secondary distribution dealt with the more challenging problem of
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`allowing a user to have an authorized access to the software program but preventing
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`the user from then making unauthorized copies and distributing those copies. This
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`problem was more challenging because it required some level of trust in the user but
`
`balanced against the possibility that the user may still have malicious motivations.
`
`33. For secondary distribution, as with other forms of piracy prevention,
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`encryption was considered a key tool to providing protection. Encryption was a
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`leading solution for various reasons. Encryption was easy to implement but hard to
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`break, making it an efficient solution. Encryption also allowed user-specific and
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`device-specific solutions, given that different devices could be given different
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`encryption/decryption keys.
`
`34. European patent Application EP 0766165A2, Ex. B-6 (“’165
`
`Application”), which published in 1997 from an application filed in 1996, disclosed
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`a license notification system. The ’164 Application disclosed sending encoded
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`license information to a user terminal, with the license information encoded with a
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`key specific to the user terminal. The user terminal checks the license information
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`when the user operates a software program. If the license information is valid, then
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`the licensee’s name is displayed.
`
`35. U.S. Patent 5,724,425, Ex. B-6 (“’425 Patent”), which issued in 1998
`
`from an application filed in 1994, disclosed a “software passport.” The software
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`passport was formed by encrypting a message digest using an application writer’s
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`private key, a license, and the software program binary code. A user’s computer
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`uses the encrypted message digest and the license to determine if the software
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`program is secure to operate. The ’425 Patent disclosed this technique to deal with
`
`the risk of users purchasing pirated software when they thought they were
`
`purchasing legitimate software.
`
`Computer BIOS
`2.
`36. By the time of the ’941 Patent’s priority date in 1998, the field of
`
`computer BIOS was well-developed. BIOS began to be used at least as far back as
`
`the 1970s, for example in 8-bit computers that ran the CP-M operating system. The
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`usage of BIOS increased rapidly, and by 1998 BIOS was present in essentially all
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`general-purpose computers, e.g., personal computers and servers. In these situations,
`
`BIOS provided the basic software routines that were run when the computer was
`
`first powered on. One of the primary responsibilities of BIOS was to load the
`
`operating system code and allow it to start executing, often called “booting” the
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`computer.
`
`37. For many years, including through to 1998, it was typical to provide
`
`BIOS in a separate memory module, apart from the main memory. These came
`
`about for numerous reasons. As one reason, the BIOS programs needed to be secure
`
`and away from other program code. Namely, accidentally overwriting or destroying
`
`the BIOS program could permanently disable the computer. So storing it on a
`
`separate memory module was considered a good approach. As another reason, early
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`versions of BIOS were expected to remain static through the life of the device. As
`
`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`such, it was common to provide BIOS programs in a true read only memory (ROM).
`
`By “true” ROM, I mean a memory chip that could not have its contents changed,
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`whether electronically or otherwise. Using true ROM also provided the benefit of
`
`not allowing BIOS to be accidentally modified, which was beneficial as described
`
`above. Additionally, it was advantageous to provide the BIOS in a non-volatile
`
`memory so that it was present when the computer was powered on.
`
`38. By the 1990s, it became more common to store BIOS programs in
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`alterable memory, i.e., memory that could be rewritten. This became more common
`
`at least in part because computer manufacturers came to realize that there was a
`
`benefit to being able to modify the BIOS programs “in the field,” as opposed to have
`
`those programs completely static for the life of the devices.
`
`39. Among these forms of rewritable memory, electrically-erasable
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`programmable read-only memory (EEPROM) was a popular technology. EEPROM
`
`was considered beneficial for a number of reasons. For one reason, EEPROM could
`
`be rewritten using simple memory access routines that could be programmatically
`
`controlled. This provided the sort of flexibility that computer manufacturers were
`
`seeking. For another reason, EEPROM could be implemented as “flash memory,”
`
`which was both reliable (not prone to unexpected loss of data) and cost effective
`
`(relatively less expensive than some other rewritable ROM technologies).
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`40. U.S. Patent 6,138,236, Ex. B-7 (“’236 Patent”), which issued in 2000
`
`
`
`from an application filed in 1996, disclosed the use of both “boot ROM (read only
`
`memory)” and “boot PROM (programmable read only memory).” The ’236 Patent
`
`explained that the boot PROM could be implemented as flash PROM, “often referred
`
`to as flash memory.”
`
`41. U.S. Patent 5,802,592, Ex. B-8 (“’592 Patent”), which issued in 1998
`
`from an application filed in 1996, disclosed a technique for verifying the integrity
`
`BIOS programs stored in “alterable read only memory (such as FLASH ROM).”
`
`42. U.S. Patent 5,835,594, Ex. B-9 (“’594 Patent”), which issued in 1998
`
`from an application filed 1996, disclosed a system for protecting the content, such
`
`as BIOS updates, in “FLASH memory or erasable programmable read-only-memory
`
`(EPROM).”
`
`C. The ’941 Patent
`43. The ’941 Patent describes a “method of restricting software operation
`
`within a license limitation.” ’941 Patent, Abstract. The ’941 Patent explains that
`
`there were many known techniques for restricting the operation of an unauthorized
`
`software program. ’941 Patent, 1:12-17. The ’941 Patent indicates that these
`
`techniques were “primarily motivated by the grand proliferation of illegally copied
`
`software, which is engulfing the marketplace,” and commented on the large financial
`
`impact of this illegal copying. ’941 Patent, 1:12-17.
`
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`Declaration of Andrew Wolfe
`In Support of Petition for Inter Partes Review of
`U.S. Pat. No. 6,411,941
`
`44. The ’941 Patent indicates that one prior art technique involved “writing
`
`
`
`a license signature onto the computer’s volatile memory (e.g., hard disk).” ’941
`
`Patent, 1:19-26. The ’941 Patent explained that this technique was “very vulnerable
`
`to attack at the hands of skilled system