Nintendo Co., Ltd. et al. v. Ancora Techs., Inc.
`
`IPR2021-01338
`U.S. Patent No. 6,411,941
`Claims 1–3, 6–14, and 16
`
`Petitioner Nintendo’s Demonstratives
`
`Oral Hearing
`October 3, 2022
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`Nintendo - Ancora Exh. 1078
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`
`
`IPR2021-01338
`U.S. Patent No. 6,411,941
`Claims 1–3, 6–14, and 16
`
`Petitioner Nintendo’s Demonstratives
`
`Oral Hearing
`October 3, 2022
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
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`Nintendo - Ancora Exh. 1078
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`
`
`GroundsofInvalidity
`
`Reference(s)
`
`Challenged
`OPTik
`
`§ 103
`§ 103
`
`Hellman + Chou
`Hellman +Chou+Schneck
`
`1-2, 11, 13
`1-3, 6-14, 16
`
`acting on the program according to the verification.
`
`1. A method of restricting software operation within a
`license for use with a computer including an erasable,
`non-volatile memory area of a BIOS of the computer, and a
`volatile memoryarea; the method comprising the steps of:
`selecting a programresiding in the volatile memory,
`using an agent to set up a verification structure in the
`crasablc, non-volatile memory of the BIOS, the veri-
`
`Nintendo - Ancora Exh. 1078
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`
`
`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`Nintendo - Ancora Exh. 1078
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`
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`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`4
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`Nintendo - Ancora Exh. 1078
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`
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`°941 Patent
`
`Background:
`
`2017}2019} 2021
`
`2008
`
`2011
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`Nintendo - Ancora Exh. 1078
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`
`
`Background: Hellman
`
`-
`
`UNIT
`
`T
`
`3
`
`BAS
`
`sorrwane
`
`|
`
`12
`
`7
`
`RCV_(
`
`XMT
`
`UNIT
`
`
`
`AUTHORIZATION
`fortza
`UNIT
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`Nintendo - Ancora Exh. 1078
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`
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`SOFTWARE
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`Background: Hellman
`
`UNIT
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`NON
`VOLATILE
`MEMORY
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`CRYPTO
`CHECK
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`Nintendo - Ancora Exh. 1078
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`
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`Background: Chou
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`POST
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`
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`Nintendo - Ancora Exh. 1078
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`
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`Overview
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`1. Background
`2. The “using an agent” Limitation.
`1. There is no disclaimer of agent to “OS-level.”
`2. There is no disclaimer or other basis for the “software-only” limitation.
`3. Hellman discloses or renders obvious an “OS-level” and “software-only”
`agent.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`9
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction Requires Disclaimer
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`
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`The term“agent” should be understood as an “OS-levelsoftware programor
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`separate fromthe BIOS.
`
`utine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`POR at32.
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
`
`What Ancora Says Now:
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`The term “agent” should be understood as an “OS-levelsoftware program or
`
`outine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`separate from the BIOS.
`
`What Ancora Said Before:
`
`POR at32.
`
`oe
`The term “agent”
`
`>
`
`is a wel -defin edand understoodterm in the computer industry.
`
`utine. An agent would be understood by those skilled in the art to have that definitive structure.
`
`I understand that HTChas presented a declaration asserting
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`What Ancora Says Now:
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`The term “agent” should be understood as an “OS.
`
`
`
`outine,” in viewoffile history that firmly establishes that the claimed “agent” runs
`
`What Ancora Said Before:
`
`POR at32.
`
`“using an agent to set up a
`verification structure in the
`erasable,
`non-volatile
`
`id ordinary
`
`rroutine”
`
`a
`
`|
`
`“Agent” is
`indicating
`lamitation
`
`a nonce word
`that
`the
`claim
`should
`be
`
`separate from the BIOS.
`§ 112(f).
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
`
`What Ancora Says Now:
`
`The term “agent” should be understood as an “OS-levelsot
`
`
`
`routine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs separate from the BIOS.
`
`What Ancora Said Before:
`
`PORat 32.
`
`
`
`erasable, non-volatile memoryof the BIOS.” The claim defines whatis to be stored, 1e., “a
`
`Claim | of the ‘941 Patent recites: “using an agent to set up a verification structure in the
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
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`What Ancora Says Now:
`
`The term “agent” should be understood as an “OS-level
`
`routine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs separate from the BIOS.
`
`What Ancora Said Before:
`
`PORat 32.
`
`such as “means,” “mechanism,” or “element” supports finding that “logic” conveys some
`
`structure.) “Agent” 1saterm knownintheart tomean“softwareprogramorroutine.” “Agent” 1s not a substitute for “means” — the only and proper inquiry.
`
`BS AEa SRERII SSC RIE OED aSa SESErea
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`> oe
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
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`What Ancora Says Now:
`
`
`
`routine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`The term“agent” should be understood as an ““OS-levelsoftware programor
`
`separate from the BIOS.
`
`PORat 32.
`
`Ancora’s Construction|Defendants’ Construction
`
`“using anagent|plain and ordinary This limitation is a means plus functionlimitation
`
`to set upa
`meaning
`governed by pre-AIA 35 U.S.C. § 112 4 6.
`verification
`eae
`Function: “set up a verification structure in the
`structure in the
`erasable, non-volatile memory of the BIOS”
`:
`-
`3
`erasable, non-
`Structure: Algorithm foundat 6:18-28; if not,
`volatile memory
`of the BIOS”
`indefinite due to a lack of correspondingstructure.
`
`
`What Ancora Said Before:
`
`7.
`
`“using an agent to set up a verification structure in the erasable, non-volatile
`memoryof the BIOS” (Claims 1, 3.7, 14)
`
`connotesstructure. As a result, § 112 § 6 does not apply.
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`What Ancora Says Now:
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`The term “agent” should be understood asan* ‘O;
`
`utine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`separate from the BIOS.
`is needed to showthat § 112 § 6 does not apply. Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008
`
`What Ancora Said Before:
`
`POR at 32.
`
`”” Indeed,
`
`the Examiner volunteered that he understood “agent” to be
`
`synonymouswith a software “program.” Ancora Ex. 4 atANCORA426-27, -428. Nothing more
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`Nintendo - Ancora Exh. 1078
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`
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`What Ancora Says Now:
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`The term “agent” should be understood as an “OS-levelsoftwareprogramor
`
`tine,” in viewoffile history thatfirmlyestablishes that the claimed “agent” runs
`
`Agent: Ancora’s Claim Construction — Contradicted by Itself
`separate from the BIOS.
`
`
`having represented “agent” to be a previously unknown concept. Defendants are wrong. “Agent”
`
`What Ancora Said Before:
`
`POR at 32.
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`To support their means-plus-function argument, Defendants try to portray Ancora as
`
`”What was novel wasthe tasks the
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
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`What Ancora Says Now:
`
`What Ancora Said Before:
`
`separate from the BIOS.
`
`
`Claims |
`“using an agent to set up a
`verification structure in the
`erasable, non-volatile memory
`of the BIOS”
`
`The term “agent” should be understoodas an*
`
`* in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`POR at 32.
`
`Claim Term
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`Court’s Final Construction
`
` —
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`Plain and ordinary meaning, whereint
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
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`What Ancora Says Now:
`
`
`
`The term “agent” should be understood as an “C
`
`* in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`separate from the BIOS.
`
`What Ancora Said Before:
`
`PORat 32.
`
`93.
`
`In fact, every use of the word “software” in Hellmanrefers to the
`
`software package being authorized for use a given numberoftimes by a base unit.
`
`Therefore, Hellman does not disclose a “so
`
`is used to set up a verification structure. Dr. Wolfe admits this. He states at § 137
`
`that “Hellman does not specifically disclose how update unit 36 is umplemented”
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Claim Construction — Contradicted by Itself
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`
`
`What Ancora Says Now:
`
`The term “agent” should be understood as an “OS-levelsoftware program o1
`
`routine,” in viewoffile history that firmlyestablishes that the claimed “agent” runs
`
`What Ancora Said Before:
`
`separate from the BIOS.
`
`PORat32.
`
`
`
`
`The expected expert testimony byIan Jestice is summarized in the
`declaration of Ian Jestice in Ancora v. HTC(see, e.g., FF 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 personofordinaryskill n
`the art at the time ofthe invention, viewing the claim languag
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`Nintendo - Ancora Exh. 1078
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`
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`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`1. There is no disclaimer of agent to “OS-level.”
`2. There is no disclaimer or other basis for the “software-only” limitation.
`3. Hellman discloses or renders obvious an “OS-level,” “software-only” agent.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
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`Nintendo - Ancora Exh. 1078
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`Agent: (Lack of) Disclosure in the Intrinsic Record
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`“Agent”: Not mentioned in specification, or the original claims.
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`- Reply 4; Ex. 1033 ¶4-15.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`22
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`Nintendo - Ancora Exh. 1078
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`(Lack of) Disclosure in the Intrinsic Record
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`Specifically, claim 1 has been amendedtorecite that the verification structure is stored in
`
`an erasable, non-volatile memory area of the BIOS. Thi
`
`uph
`
`in sections 3, 4 and 5 of the Final Office Action,
`
`Action.
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`as well as the rejection under 35 U.S.C. 112, second paragraph in section 7 of the Final Office
`
`matter which wasnot described in the specification in such a wayasto enable oneskilled
`
`in the art to which it pertains, or with whichit is most nearly connected, to make and/o
`y
`-
`use the invention. The applicant refers to secondary non-volatile storage as EEPROM
`
`"
`
`(Twice Amended)
`
`A methodofrestricting software operation within a license
`
`(Specification, page 8, lines 1 and 25-27). However, EEPROMsrequirea special or
`
`comprising the steps of:
`
`selecting a program residing in the volatile memory,
`programmervoltage to program it, store 0’s and 1s, are programmedat the factory and
`usinganagenttosettingupverification structure in the seeend-erasable. non-volatile
`whenerased all data is removed. The App!
`
`memory ofthe BIOS. the verfeatien-verification structure accommodatinges data that includes
`
`Office Action Response (Nov. 14, 2001). Claim 1 is rejected under 35 U.S.C. 112, first paragraph, as containing subject
`
`or use with a computer including an £4
`‘
`:
`nen-erasable, non-volatile memory area of a (BIOS) of the computer. and a volatile memory
`area;
`the—first_non-volatile-memery—aecemoedates—data—that-ineludes—umique-key:—the method
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`Nintendo - Ancora Exh. 1078
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`
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`Furthermore, there is no suggestion or motivation to combine Misra and Ewertz in the
`
`manner suggested in the Office Action. BIOSis a configuration utility. Software license
`
`mutually exclusive.
`
`management applications, such as the one ofthe present invention, are operating system(OS)
`level programs. Therefore, BIOS programs and software licensing management applications do
`not ordinarily interact or communicate berms when BIOSis running,the compiiter is ina
`configuration mode, hence OS is notrunning. Thus, BIOS and OSlevel programs are normally
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`Nintendo - Ancora Exh. 1078
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`
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`would render the present invention obvious. However, the key distinction
`
`between the present invention and the closestprior art, is that the Misra et al.,
`
`and Ginter et al. systems and the Ewertz et al. system run at the operating
`
`system leve! and BIOS level, respectively. More specifically, the closest prior art
`
`
`
`systems, singly or collectively,donotteachlicensedrunningattheOSprograms
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`the program using the verification structure and having a user act on the program accordingto the verification. Further, it is well known to those of ordinary skill of
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`
`
`
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`
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`to verify
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`Nintendo - Ancora Exh. 1078
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`system level and BIOS level, respectively. More specifically, the closestprior art
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`the art that a computer BIOSis not setup to manage a software license
`
`the program using the verification structure and having a user act on the program
`
`according to the verification. Further, it is well known to those of ordinary skill of
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`Nintendo - Ancora Exh. 1078
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`
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`Other prosecution statements cited by Apple no more establish the narrowing it urges. Although Apple makes muchof
`
`language aboutstoring "application data" in the BIOS area, Amendment dated Feb. 5, 2002, at 7, nothing in the
`applicants’ statements indicates that the "application" in question is the to-be-verified software, as opposedto the
`verifying software; and in any event, the language doesnotrise to the level of a disclaimer regarding nature of the to-be-
`
`
`
`
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`
`
`
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`verified software.Likewise,althoughtheexaminerstatedinhisreasonsforallowancethat"theclosestpriorartsystems,
`
`
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`Inanyevent,thestatementisnottheapplicants’statement.See Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345
`
`
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`(Fed. Cir.2005) (remarks in the examiner's statement of reasonsfor allowanceinsufficient to limit claim scope). And, as
`
`
`
`
`
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`quoted above,theapplicantswereclearthattheOS-levellanguagereferredtotheverifyingsoftware.
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`Nintendo - Ancora Exh. 1078
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`
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`coverage by a license is being checked anda piece of software that embodies the patent's claimed method of checking.
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`
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`Theterm"program"intheclaimsrefersexclusivelytotheto-be-verifiedprogram.Indeed, neither the specification nor
`
`
`
`
`the claims use the term "program"to refertosoftware(asetofinstructions)that,whenrun,performstheclaimed
`
`
`
`
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`verificationsteps,insteadreferringtotheinventionasa"method,""system,"or,inoneinstance,a"licenseverifier
`application." See, e.g., '941 patent, col. 1, lines 6-8; id., col. 2, line 14.
`
`The prosecution-history statements that Apple cites are focused ontheverifyingsoftware,not clearly (or in any event
`
`
`
`
`relevantly) on the to-be-verifiedprogram,and so cannot support Apple's narrowing argument. Specifically, the applicants
`distinguished their invention over a combination of two references: one disclosed storage in the BIOS memory area by
`the BIOS softwareitself; the other disclosed software implementedin or through an operating system. 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 BIOSlevel for data storage and retrieval—a combination that was not previously *736
`
`The prosecution history requires more extended discussion, but it too does not require a meaning that substitutes for the
`ordinary one. In reading the prosecution history,it is important to keep in mind the distinction between a program whose
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`taught and that an ordinarily skilled application writer would not employ:
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`Nintendo - Ancora Exh. 1078
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`Agent: Supposed Disclaimer of Agent without Mentioning Agent
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`The reference to the invention as a "license managementapplication[ ]" and the identification of persons of ordinary skill
`in the relevant art as "application programmers" who "make[] use of OS features" demonstrate that the applicants
`understood that their claimed methods would be implemented as application software, rather than lower-level system
`software. But pene PARERSAEAION. maein catnauisting pBHO art, concerned software that implemented the invented
`method. Theto-be-verifiedsoftwareisdifferentfrom theverifyingsoftware. The statements from the prosecution history
`on which 7 rallies Sore=i say that —_programicing vealal capil ie an application program. Even the reference to
`"application data" in describing Misra, even if read to refer to data about a to-be-verified program (whichis not clear),
`does notdistinguish Misra, or limit the present claims, on that basis.[1]
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`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 736 (Fed. Ci. 2014).
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`
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`Ancora’s First Characterization:
`
`“OS-Level” is Anything that Runs
`After BIOS Setup Is Complete
`
`Furthermore, there is no suggestion or motivation to combine Misra and Ewertz in the
`
`manner suggested in the Office Action. BIOS is a configuration utility, Software license
`
`management applications, such as the one of the present invention, are operating system (OS)
`
`einenes csunn tsushe titers
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`corporation, or UNIX-based servers” Col 5, lines 3-7 3. Therefore, there is no teaching or
`
`mutually exclusive.
`
`ing, Thus, BIOS and OS level programs are normally
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`Ewertz teaches that writing to the BIOS area is performed by the BIOS routines:
`
`“Referring to Fig. 8, processing logic for updating the flash memory
`device with configuration data,
`such as EISA information,
`is
`illustrated... The processing logic shown in Fig. 8 resides in the system
`BIOSofthe preferred embodiment” Col 10, lines 20-28
`Misra teaches a licensing system that is OS level based:
`
`“The license generator 26, license server 28 and intermediate server 32 -
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`Ancora’s First Characterization:
`
`“OS Level’ as Anything that Runs
`After BIOS Setup Is Complete
`
`14. Q. And what does that mean, "in the context
`15 ofthe operating system"? I'm not familiar with
`16 that language.
`17. A. Whena computerboots, starts, the first
`18 thing that runs is the BIOS program. The BIOS
`19 program initializes the device, does all kinds of
`
`20 checks, and then ——— ae executionto—_
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`
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`Ancora’s Second Characterization:
`
`The term“agent” should be understood as an “OS-level
`software program
`
`
`
`“OS Level” as Anything Separatetheclaimed“agent”runsroutine,” in viewoffile historythat firmly establishes that
`from the BIOSseparate
`
`POR at32.
`
`fromtheBIOS.
`or routine. T
`
`131.
`
`In viewof both the applicant’s and the examiner’s statements, the term
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`“agent”in the context of the °941 patent would require an OS-level software program
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`“OS Level’ as Something Else. ..
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`4. The Joint Press Release references Ancora’s Platform Security Anchor
`
`(“PSA”) technology. Ancora developed this software jointly with AMI
`
`between 2004 and 2005 to implement the technology claimed in the °941
`
`
`
`
`
`patent. More specifically, the PSA software included asoftwareelementthat
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`vice to set up a verification structure (including
`
`at least one license record) in erasable, non-volatile memory of the device’s
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`BIOS. The PSA software also included a software element that verified a
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`program residing in the device’s volatile memory by using at
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`least the
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`the verification.
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`“OS Level” as Something Else...
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`THE WITNESS: It's a way to describe code
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`MR. GOSSE: Object to the form.
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`EX. 1034, 59:7-12 (Deposition of mventor/owner, Miki Mullor).
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`“OS Level” as Something Else...
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`So my understanding of the term "OS
`18
`19 level" is consistent with whatI cited in those
`paragraphs | just named, and relates to
`
`progran
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`EX. 1035, 100:18-22 (Deposition of Ancora’s expert, Dr. Martm).
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`Nintendo - Ancora Exh. 1078
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`Agent: Ancora’s Proposed Construction Is Itself Ambiguous
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`“OS Level” as Something Else...
`
`I've used the term "OSlevel", and as I've
`understood others to be using the term as cited in
`my report, OS level software can be thoughtof as
`running through the operating system.
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`I think that's consistent with whatI've
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`Nintendo - Ancora Exh. 1078
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`
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`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`1. There is no disclaimer of agent to “OS-level.”
`2. There is no disclaimer or other basis for the “software-only” limitation.
`3. Hellman discloses or renders obvious an “OS-level,” “software-only” agent.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: No Basis for Software-Only Limitation
`
`
`
`“Agent”: Not mentioned in specification,
`or the original claims.
`
`agent An autonomous system that receives
`information from its environment, processes
`it, and performs actions on that environ-
`ment. Agents may have different degrees of
`intelligence or rationality, and may be soft-
`
`ware, hardware, or both.
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: No Basis for Software-Only Limitation
`
`
`
`At this stage,wedeclinetoimportanegativelimitationintotheclaim
`
`
`The Board previously consideredterm“agent”toexcludeacombinationofsoftwareandhardware.Patent
`and re]ected Ancora*s software-only
`Ownerhas submitted several district court claim constructions, but has not
`negative limitation
`proffered arguments as to why weshould adopt any specific district court
`
`
`constructions. Prelim. Resp. 6-13.Apartfromtheclaims,theSpecification
`
`for purposesofinstitution.
`
`agent] accomplished operation’” of setting up a verification structure in the
`
`andhardware. The term “agent” was added during prosecution. Ex. 1013
`(District Court Claim Construction Order entered in the LG case), 29.
`
`Althoughthe claimdoes not describe howthe “agent” fits in structurally
`
`with the other components of the system, Patent Ownerargued in the LG
`
`case that “E2PROM manipulation commands as an example of ‘how[the
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: No Basis for Software-Only Limitation
`
`
`
`Ancora’s infringement contentions accused a combination of hardware and software.
`
`°941 patent, claim 1.
`
`least one license record,
`by transmitting to the device an OTA update, which the Nintendo Switch is configured by Nintendo to save to the erasable, non-volatile memory of its BIOS.
`
`
`
`44._—_Duringthis process, one or m«
`
`
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`1. There is no disclaimer of agent to “OS-level.”
`2. There is no disclaimer or other basis for the “software-only” limitation.
`3. Hellman discloses or renders obvious an “OS-level,” “software-only” agent.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: Hellman Includes Ancora’s Narrowed Agent
`
`
`
`Hellman discloses a software-only agent.
`
`does not explicitly say whetherthe update unit 36 should be implementedin software,
`
`Hellman
`
`ofthe two.
`
`hardware, or a combination of the two. A POSA would have recognized fromthis
`
`lack of discussionthat it was not necessarythat one type of umplementation be used
`
`over another. In other words, a POSA would have understoodthat it was up to the
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: Hellman Includes Ancora’s Narrowed Agent
`
`
`
`Hellman also renders obvious a software-only agent.
`
`software, hardware, or both. The update unit 36 retrieves a value stored at a location
`
`a POSA would have understood could be implemented in software, hardware, or
`
`137B. This understanding would have been confirmed by the fact that the
`
`activities performed by the update unit 36 were of a type that could be performed in
`
`in EEPROM,performsintegeraddition and/or subtraction, and transmits a value to
`
`be stored at a location in EEPROM. Hellman, 9:64-10:13. Theseareall tasks that
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: Hellman Includes Ancora’s Narrowed Agent
`
`
`
`Hellman’s update unit 36 meets Ancora’s characterization of “OS-level.”
`
`
`
`FIG. 8 depicts an implemenation of the base unit 12
`during use of a software package. Software package 17
`is connected to the base unit 12 and a signal representing
`said software package is operated on by the one-way
`hash function generator 33 to produce an outputsignal
`which represents the hash value H. The signal H is
`transmitted to update unit 36 to indicate which software
`package is being used. Update unit 36 uses H as an
`address to non-volatile memory 37, which responds
`with a signal representing M, the number of uses of
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: Hellman Includes Ancora’s Narrowed Agent
`
`Hellman’s update unit 36 meets Ancora’s characterization of “OS-level.”
`
`
`
`Hellman at 10:66-11:3.
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Agent: Hellman Includes Ancora’s Narrowed Agent
`
`
`
`Hellman’s update unit 36 meets Ancora’s characterization of “OS-level.”
`
`SOFTWARE
`
` BIOS ON
`
`ee)
`
`PLAYER
`
`ONE Wat
`
`SwiTCs ee
`
`VOLITILE
`MEMORY
`
`Mel
`[*-—~———
`
`oe
`OUNIT
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Verification Structure
`
`
`
`Hellman’s update unit 36 sets up a “verification structure”
`
`
`
`
`
`
`
`HHforasoftwareprogramidentifiedbythathashvalueH.Wolfe Decl. €€| 133
`
`a license record at a specific license record location that corresponds to the licensed program. See °941 Patent at 1:59-62: 6:17-21; Wolfe Decl. 4§ 133-138.
`
`138. The value M is the required “license record”, because it indicates the scope of
`
`authorized use—the numberof uses, where “M”is the number—forthe specific
`
`software package 17 identified by hash value H. Jd. Storing the value M at the
`
`address H constitutes setting up a verification structure because it includes storing
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Verification Structure
`
`
`
`Hellman’s update unit 36 sets up a “verification structure”
`
`
`
`
`
`addressesdefinedbyatleastonehashvalueH.Hellman discloses that hash value
`
`H is “an ‘abbreviation’ or name for describing the software package 21,” whichis
`
`an “exact replica” of software package 17. Hellman, 6:16-61. Hellmandiscloses
`
`that hash value H has the characteristic that “it is easily com[]puted fromits input
`
`signal, software package 21, but given an H valueit is difficult, taking perhaps
`
`millions ofyears, to compute any other software package w[h]ich producesthis same
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Verification Structure
`
`
`Hellman’s update unit 36 sets up a “verification structure”
`
`136. Basedatleast on these disclosures, a POSA would have recognizedthat
`
`is permitted, a POSA would have recognized that this memory structure is a verificationstructure.
`
`
`
`
`
`storingauthorizedusevaluesMinthenon-volatilememory37.And becausethe
`
`stored authorized use value M is used to verify if operation of software package 17
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Verification Structure
`
`
`
`Hellman’s update unit 36 sets up a “verification structure”
`
`
`
`
`
`
`
`permitted. Jd., 4136. As I explained in my deposition,Hellman’sstructurememory
`
`resides. In my view, Patent Ownererrs in conflating the two.
`
`
`
`
`
`
`
`couldbeadata“table”thatusesHvaluesasanindex.EX2026, 30:1-22. An
`
`example of such a table is shownbelow:
`
`Memory Address
`Address Defined by (H1)
`Address Defined by (H2)
`Address Defined by (H3
`
`45.
`
`But this memory structure is different than the memoryin whichit
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Verification Structure
`
`Patent Owner Position:
`
`1. Unclear,
`
`3. Unsupported by the Intrinsic Record.
`
`2. Unsupported by Expert Testimony,
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Overview
`
`1. Background
`2. The “using an agent” Limitation.
`3. The “verification structure” Limitation.
`4. Motivation to Combine Hellman and Chou
`5. Dependent Claims
`6. Secondary Considerations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Motivation to Combine: Overview
`
`Hellman,Fig. 6 (Annotated by Petitioner)
`
`
`
`EEPROM (Hellman)
`BIOS EEPROM (Chou)
`
`VOLATILE MEMORY (6
`
`| UCENSE PROGRAM
`
`|
`
`UCENSE BUREAU
`
`;
`
`7)
`
`|
`
`Nintendo - Ancora Exh. 1078
`
`
`
`
`
`
`
`memory 37 in Hellmanas the BIOS memory of ChoubecauseChoudisclosedthat
`
`Third, a POSA would further have been motivated to use the non-volatile
`
`Motivation to Combine: Rationale #1
`
`
`
`
`
`‘tamperingwiththatinformation.Wolfe Decl. § 115. Chouexplained that, by
`
`storing sensitive information (passwords in Chou) in the BIOS memory, any
`
`attempt to delete or disable the sensitive information would also disable the BIOS
`
`program. Chouat 1:63—2:1; Wolfe Decl. § 115. In other words, a user attempting
`
`to alter the sensitive information would be risking disabling the device entirely.
`
`Wolfe Decl. § 115. A POSA would have recognized that this heightened risk
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Motivation to Combine: Rationale #1
`
`Recent changes|in the computer BIOS memorystorage
`
`
`
`devices may be programmed wit
`ash
`routines which permit the user to enter data without requir-
`ing the computer to be returned to the manufacture. The
`present invention makes use of these new BIOS memory
`devices for effecting security measures which discourage
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Motivation to Combine: Rationale #2
`
`at 3:21-35, 3:52-62: Wolfe Decl. §§ 112-116.Thus,aPOSAwouldhavebeen
`
`
`
`‘storingtheBIOS.Wolfe Decl. § 105-111. Thus, ifa BIOS wasnotalready
`
`present, a POSA would have been motivated to add a BIOSstored in a memory of
`
`the computer(base unit 12) of Hellman,at least because that was the standard—
`
`nearly universal—way in which computers operated prior to the priority date of
`
`the °941 patent. Jd.
`119-120.
`
`
`
`
`
`tamperingwiththelicenseinformation,Chou at 3:21-35, 3:52-62:
`
`Petition at 32.
`
`Wolfe Decl. §§ 112-116. Moreover, it was commonpractice to store more than
`
`one thing in a single memory module in a computer. Wolfe Decl. §§ 112-116,
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Motivation to Combine: Rationale #3
`
`
`
`memory 37 in Hellmanas the BIOS EEPROM ofChoubecausethatwouldhave.
`
`Second, a POSA would further have been motivated to use the non-volatile
`
`es. Wolfe Decl. § 114. Namely, a
`
`POSAwould have recognized that in many computers of the era in the late 1990s,
`
`there wouldbe few if any other EEPROM memory modules present on the
`
`computerother than the EEPROMstoring the BIOS. Jd. EEPROM was a
`
`specialized memory module, and it wa
`
`
`
`
`
`
`
`suchmodulesinanycomputer.Id. Hence, the EEPROM storing the BIOS would
`
`have been oneofat most a handful of available EEPROM storage modules with
`
`whichthe non-volatile memory 37 of Hellman could be implemented. Jd. In many
`
`Nintendo - Ancora Exh. 1078
`
`
`
`
`
`memory 37 in Hellman as the BIOS EEPROM of Choubecausethatwouldhave
`
`Fourth, a POSA would further have been motivated to use the non-volatile
`
`
`
`
`
`
`
`providedeconomicandoperationalefficiencies.Wolfe Decl. 116. Namely.
`
`Motivation to Combine: Rationale #4
`
`using an EEPROM module other than non-volatile memory 37 to store the BIOS
`
`would have increased the cost of the computerand increased the space used onthe
`
`
`
`
`
`
`
`
`
`motherboard for the chips. Jd.‘Computergenerallysoughttomanufacturers
`
`possible. Id. Because a single EEPROM module would havehadsufficient space
`
`to store both the BIOS and otherancillary information, like the license information
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Motivation to Combine: The License Record Is in Memory of the BIOS
`
`aiii 15
`
`i, OIGwaserccreesern ness erento emunmenseass 17
`B.
`“using an agentto set up a verification structure in the erasable, non-
`volatile memory ofthe BIOS” o.oo. cece cece ceeeeeeccececeeseeeeeeeuees 20
`1.
`AONEincsnaaiia cus iawexus ia wadalespumaieweasoandocedaaiauicuccieuawexeues linea 20
`2. elePaoe 3]
`if
`
`“memory of the BIOS” oo... ccc.ecceeeeeteeeettetetetteseeseeeseeeee DD
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`
`RUAI assist A Silica acacia mia 30
`
`POPR(Table of Contents).
`
`Nintendo - Ancora Exh. 1078
`
`
`
`Post
`BOOT CODE
`
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