Trials@uspto.gov
`571-272-7822
`
`Paper # 46
`Entered: November 22, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`IPR2021-01338
`Patent 6,411,941 B1
`__________
`Record of Oral Hearing
`Held: October 03, 2022
`__________
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`
`571-272-7822
`
`Paper # 46
`Entered: November 22, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioner
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`__________
`IPR2021-01338
`Patent 6,411,941 B1
`__________
`Record of Oral Hearing
`Held: October 03, 2022
`__________
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`
`
`IPR2021-01338
`Patent 6,411,941 B1
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`JERRY RIEDINGER, ESQ.
`JOSE VILLARREAL, ESQ.
`KYLE CANAVERA, ESQ.
`TARA CURTIS, ESQ.
`of: Perkins Coie LLP
`700 13th Street, NW
`Suite 800
`Washington, D.C. 20005-3960
`(202) 654-6200
`
`ON BEHALF OF THE PATENT OWNER:
`
`DAVID GOSSE, ESQ.
`NICHOLAS PETERS, ESQ.
`KAREN WANG, ESQ.
`of: Fitch, Even, Tabin & Flannery LLP
`1250 23rd Street, NW
`Suite 410
`Washington, D.C. 20037
`(202) 419-7000
`
`The above-entitled matter came on for hearing Monday,
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`October 3, 2022, commencing at 12:00 p.m. EDT.
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`IPR2021-01338
`Patent 6,411,941 B1
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`P-R-O-C-E-E-D-I-N-G-S
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`11:59 a.m.
`JUDGE DANG: Good afternoon, everybody. We are here to hear
`arguments for case number IPR2021-01338 between Nintendo Co. and
`Nintendo of America, as Petitioner, and Ancora Technologies, Inc., as Patent
`Owner. This is concerning U.S. Patent No. 6,411,941. Counsels, please
`introduce yourselves, starting with Petitioner.
`MR. CANAVERA: Yes, Your Honor. Kyle Canavera, on behalf of
`the Petitioners.
`JUDGE DANG: Hello.
`MR. GOSSE: Thank you, Your Honor. David Gosse on behalf of
`Patent Owner.
`JUDGE DANG: Okay, great. We had the pre-hearing call in which
`Patent Owner would like to assess how much time it would like at the end of
`the proper portion for the private portion. Could you please confirm whether
`or not thirty minutes for both parties would be enough?
`MR. GOSSE: Your Honor, Patent Owner would prefer to reserve ten
`minutes for the non-public portion of the hearing.
`JUDGE DANG: Okay. Ten minutes, okay.
`MR. CANAVERA: Your Honor, we would like to reserve ten
`minutes as well.
`JUDGE DANG: Okay, great. So, twenty minutes at the end. Okay,
`so we will have a public portion; and this will be our public portion and by
`the end of this portion, each, we will turn off the audios for the phone calls
`and we will invite the public to leave camera so we can have our private
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`IPR2021-01338
`Patent 6,411,941 B1
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`portion. Okay, and so with each reserving ten minutes, you will each have
`fifty minutes. Petitioner, would you like to begin any time, and you will
`have fifty minutes -- Oh, I'm sorry. Would you like to reserve any time?
`MR. CANAVERA: Yes, Your Honor. I'd like to reserve fifteen for
`rebuttal in this hearing.
`JUDGE DANG: Okay, great. So thirty-five minutes and then fifteen
`minutes. Okay. Thank you.
`MR. CANAVERA: May I begin?
`JUDGE DANG: Yes, please.
`MR. CANAVERA: Good afternoon, Your Honors. Kyle Canavera
`on behalf of the Nintendo Petitioners.
`I’ll discuss five issues today. Two relate to whether the prior art
`discloses particular claim elements; two relate to the combination of the
`prior art; and one relates to secondary considerations of non-obviousness.
`The last issue will be handled in the post-hearing following this one.
`
`Looking at slide 2 of our demonstratives, the petition presented two
`grounds for invalidity. Hellman is the base reference for both. For the
`primary claim at issue, Claim 1, Hellman discloses all of the elements except
`for the BIOS memory.
`
`Chou discloses that feature. Chou also provides its own motivation to
`combine the references to arrive at the claimed features.
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`It’s a simple combination with its own motivation to combine. We
`ask that this panel find the claims invalid for the reasons stated in the
`petition.
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`IPR2021-01338
`Patent 6,411,941 B1
`
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`Turning to the first issue, is the question of whether Hellman plus
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`Chou discloses the using of agent limitation. On slide 10 of our
`demonstratives, we show Patient Owner’s proposed construction for this
`term. OS-level software program for routine.
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`The Board cannot agree with that construction unless it finds
`disclaimer. That’s not our petition, that’s not our position, that’s Ancora’s
`position.
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`And the board should take account of the construction that Ancora has
`proposed for agent in over a decade of litigation. We have examples of
`those on our slides 11 through 20 of our demonstratives.
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`In repeated presentations to Courts, to this Board, Ancora has said that
`agent requires software program routine without ever mentioning the OS-
`level limitation.
`
`This is not a position that they had and have changed. As shown on
`slide 20 of our demonstratives. In February of this year, or I mean January
`of this year after the preliminary response in this proceeding, Ancora was
`still saying that the instruction for agent should be software programmer
`routine, in light of, including the prosecution history which they now say
`creates disclaimer.
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`JUDGE FLAX: So, counsel, the examiner said it had to be at the OS-
`level, right, in the notice of allowance?
`
`MR. CANAVERA: That’s not quite right, Your Honor.
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`JUDGE FLAX: Not quite, right?
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`MR. CANAVERA: The examiner said that the license programs had
`to be at the OS-level. The examiner did not say the agent was at the OS-
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`IPR2021-01338
`Patent 6,411,941 B1
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`level. I can, I’m going to bring up the particular portion I think Your Honor
`is referring to.
`
`On slide 25 of our demonstratives, the examiner said that the prior art
`do not teach licensed programs running at the OS-level, interacting with the
`program verification structures stored in the BIOS.
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`And there’s continued discussion on the next page, and this is on slide
`26. The examiner mentions the agent but only at the end, and OS-level is
`not described in the agent. It’s described in the licensed programs.
`
`Now I do want to clarify, the Federal Circuit discussed this passage,
`and we have those excerpts in slides 27, 28, 29. And, the Federal Circuit
`said that OS-level language was describing the verifier program.
`
`But the Federal Circuit said the verifier program is what does Claim 1.
` It uses the agent. It’s not the agent. And the Federal Circuit drew that
`distinction looking at this very office action.
`
`The Federal Circuit described the OS-level language in the Apple
`appeal and did not describe agent. They were talking about the program and
`the unresided verifier software.
`
`It’s simply not a description of agent itself. It’s a description of
`whatever does Claim 1.
`
`The Board should not reach this construction for OS-level for another
`reason. Apart from the fact that agent is not described in the specification
`and that the prosecution history that Ancora points to is not describing agent,
`it’s not clear what the construction of agent really means. Pardon me, the
`construction of OS-level really means.
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`Ancora has used OS-level in a multitude of ways. On slide 30 we
`show one example. In the office action that Ancora primarily points to,
`which is shown here on slide 30, there’s this sort of time wise distinction.
`They say the BIOS is a configuration utility. It runs for a while, then
`it’s done. Things after that are OS-level. So that’s one potential meaning of
`OS-level.
`
`JUDGE DANG: Counselor?
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`MR. CANAVERA: Yes, Your Honor?
`
`JUDGE DANG: Are you saying that OS-level needs to be defined
`because one of ordinary skill in the art would not know what OS-level is?
`
`MR. CANAVERA: I am saying something similar, Your Honor. I’m
`saying that OS-level is not sufficiently clear to establish clear and
`unmistakable disclaimer of the claim.
`
`OS-level is used sort of like a moniker here. It’s, maybe it’s
`something other than BIOS. It’s not, it’s not used in the specification. And
`the operating system is never mentioned in the specification, so it’s not a
`precise term, or even a reasonably precise term.
`
`It is a, it is a moniker. It’s a sort of vague notion of something maybe
`different from BIOS, but it’s nothing clear than that.
`
`JUDGE DANG: Operating system is not clear?
`
`MR. CANAVERA: Operating system level.
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`JUDGE DANG: Oh, I see.
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`MR. CANAVERA: That’s the issue, Your Honor.
`
`JUDGE DANG: Yes.
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`IPR2021-01338
`Patent 6,411,941 B1
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`MR. CANAVERA: In deposition, the inventor said the operating
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`system level does not mean the operating system. He said we did not invent
`the operating system. I don’t think there’s a dispute on that, but if OS-level
`is not the operating system, the question is what is it?
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`Is it something the operating system uses? Is it something that uses
`the operating system? Is it something existing in parallel with the operating
`system? That’s the challenge.
`And it’s heightened by the fact that Ancora itself has not used this
`term consistently. I showed one of those examples, this temporal distinction
`on slide 30. They’ve used that other places; we show that on slide 31.
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`There’s a related but slightly different characterization on slide 32.
`It’s sort of a logical separate from the BIOS. That’s maybe a similar idea,
`but it’s not a sort of time wise distinction.
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`This is from the patent and a response here, and Dr. Martin’s
`declaration, Ancora’s expert.
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`But there’s a variety of other characterizations, especially coming
`from Ancora’s own expert. When asked about what OS-level means, he
`used terms like as shown on slide 35, programs that are running that use the
`running operating system services as part of their operation. So, there would
`be something that uses the OS.
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`We had another characterization at that same deposition relying on
`operating system services, and, and doing so after the operating system is
`running.
`So that sort of mixes two of the previous characterizations.
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`So, operating system, I think that we can say the person with skill in
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`the art knows what that is. But what it means to describe an agent as OS-
`level, that’s not sufficiently clear to be clear and unmistakable disavowal.
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`There’s also the software only limitation in the construction that
`Ancora’s proposing. This one I don’t think Ancora’s saying it’s a
`disclaimer, I think they’re trying to say it’s the plain and ordinary meaning
`of agent.
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`But the extrinsic or evidence show that’s not true. As shown on slide
`38, here is a dictionary definition that says an agent can be software,
`hardware, or both.
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`And the reason we have to look to the extrinsic evidence is because
`the patent just doesn’t tell us. I’m sure you’re seen this in the briefing.
`Agent’s just not in the patent.
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`And that is the difficulty with creating negative limitations, disclaimer
`on a term that just doesn’t show up.
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`This Board has already addressed the software only limitation in the
`institution decision of the Sony IPR petition, which had the same grounds as
`the present one.
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`The Board found that the software only limitation was a negative
`limitation, and found again, not, not being mentioned in the specification,
`there was no basis for a negative limitation to software only.
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`There’s another reason that a software only limitation is not
`appropriate. It’s inconsistent with Ancora’s own infringement allegations
`shown on slide 40.
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`IPR2021-01338
`Patent 6,411,941 B1
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`On the top of the slide is the claim language using an agent to set up a
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`verification structure in the erasable, non-volatile memory of the BIOS.
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`On the bottom is paragraph 44 from the infringement complaint
`against Nintendo. So, for this feature, you can see the parallel, the parallel
`language here, and I can represent to Your Honors, there’s no other mention
`of agent in that complaint.
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`This is the allegation of infringement. They point to OTA Servers,
`one or more OTA Servers. Those are over-the-air update servers. They are
`servers. So just last year, Ancora says an agent can be a server.
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`They didn’t, they didn’t think to mention that the hardware must be
`excluded. They didn’t explain how a server off of the device being operated
`on is somehow OS-level.
`Nonetheless, OTA server is their allegation of an agent. But that is
`inconsistent with their construction now, which is this OS-level and software
`only.
`If the Board does agree with this construction with the OS-level over
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`the software only limitation, Hellman does disclose those, or render them
`obvious.
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`As shown on slide 42 of our demonstratives, we actually address the
`software only limitation from the beginning of the case. This is from Dr.
`Wolfe’s declaration which accompanied our petition.
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`And he explained that to a person of skill in the art reading Hellman,
`he understands that the Update Unit 36 can be implemented as software,
`hardware, or a combination of both. That’s in paragraph 137a as shown.
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`IPR2021-01338
`Patent 6,411,941 B1
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`In paragraph 138 he also opined that the authorization billing Unit 13,
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`which is akin to a server, that’s in Hellman, is also an agent or a works with
`the Update Unit 36 as an agent.
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`That very closely parallels the infringement contentions that I just
`showed you.
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`With those opening papers we also explained that there is a motivation
`to combine, a motivation to modify Hellman that a person of skill in the art,
`knowing that there could be a software implementation, a hardware
`implementation, or a combination, prefers the software implementation
`because it can update the logic for the Update Unit 36 without having to
`remove hardware from the computer, send it back to the manufacturer.
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`As to OS-level, there is a lack of clarity on what would be required for
`OS-level. But Hellman has, Hellman’s Update Unit 36 meets the
`requirements of that term in the various characterizations that Ancora has
`provided.
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`I want to address the first of the prosecution history. Your Honor
`raised that and as I said, the examiner was not describing agent when he
`talked about OS-level. He described license programs, and the Federal
`Circuit said the verifier software, again, that’s a thing that uses the agent not
`the agent itself.
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`But if there’s something to be taken away there, it’s that the, there are
`license records in the BIOS memory for things that are not necessarily
`BIOS.
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`And the agent was added during prosecution to overcome and enable
`in rejection to give that bridge. And Hellman Update Unit 36 does just that.
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` There’s a software package 17 being verified to Update Unit 36, that
`verifies that by writing into the EE prom of non-volatile memory 37.
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`If the agent is anything based on the prosecution history, it’s this
`bridge to the EE prom of the BIOS memory. And that’s exactly what
`Update Unit 36 exists in Hellman; that’s exactly why it exists at Hellman.
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`As for Ancora’s other characterizations of what OS-level means,
`Hellman has those as well. There is, Your Honors will recall the temporal
`distinction that maybe OS-level is everything that runs after the BIOS
`configuration utility has finished.
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`As we explained in our papers, and as Dr. Wolfe explained in his
`declaration, the Update Unit 36, and I’m looking at slide 46 here of our
`demonstratives, is something that is running throughout the operation of the
`computer.
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`It’s verifying the software, the software package 17 should be at the
`top, anytime the user tries to run it. It must be running after the BIOS has
`completed or else it couldn’t verify the software.
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`So, for the temporal distinction, the Update Unit 36 absolutely is still
`running after BIOS is completed. Because this runs when the user tries to
`operate the software program.
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`As for Ancora’s logical separation-type characterization of OS-level,
`again that’s, that maybe OS-level is anything logically separate from BIOS,
`Hellman discloses that, too.
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`Hellman doesn’t explicitly mention a BIOS, we rely on Chou, on
`Chou for the BIOS and the BIOS memory. So, on its face, Update Unit 36
`can’t really be BIOS if there’s no BIOS in Hellman.
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`IPR2021-01338
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`But more to the point, again, Update Unit 36 has to be available when
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`a user tries to run a software application. And according to Ancora, and
`their statements in the office action they point to for disclaimer, that’s not
`possible for BIOS.
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`So again, the logical separation Update Unit 36 meets that
`characterization of OS-level, as well.
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`And then for the characterization of OS-level as something that uses
`OS resources, Hellman reached, meets that as well. Hellman doesn’t
`explicitly mention an operating system, but the 941 Patent doesn’t either.
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`And the way that Ancora’s expert got to their being an operating
`system in the 941 Patent, that same analysis is present in Hellman.
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`It describes things that would tend to require an operating system. Dr.
`Wolfe explained that that’s true in Hellman, as well, in paragraph 31 of his
`second declaration.
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`And in particular, he explained that Update Unit 36 does things that
`would require operating system resources. So, it does arithmetic, it would
`use a clock. It would use processing power.
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`So, if OS-level means something that relies on OS services, then
`Hellman’s Update Unit 36 does that, as well.
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`So, we don’t think Your Honors should agree with either of the
`narrowing limitations on agent, but if you do, Hellman discloses those
`features or renders them obvious.
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`If there are no other questions, if there are no questions on agent, I’ll
`move on to the verification structure element.
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`Patent 6,411,941 B1
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`Looking at slide 48 of our, pardon me, looking at slide 48 of our
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`demonstratives, we have argued since the beginning of the case in our
`petition and in the accompanying Wolfe declaration, that the verification
`structure exists in Hellman because Hellman’s Update Unit 36 stores data,
`these values M in the non-volatile memory 37.
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`It does so in a space set aside based on those hash values states, which
`are memory addresses, and it does so based on that specific memory address
`scheme using H to figure out the right memory address for storing M.
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`Slide 48 is from our petition. Slides 49 and 50 are from the
`accompanying Wolfe declaration.
`And that has been our position from the start, and that is still our
`position now. Update Unit 36 is managing a data structure in non-volatile
`memory 37 managing these values M at specific, defined locations H.
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`In the Patient Owner response, they said that there’s no verification
`structure. They said we had left it out, or that there was nothing there.
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`But their position seems to either misunderstand Hellman, or just
`doesn’t appreciate what Hellman is doing. They said there was a nebulous
`collection of hash values in non-volatile memory 37. Said that’s all that
`Hellman had.
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`That’s not correct for a few reasons. As we explained, the hash value
`aren’t actually stored, so there are no hash values in the first place.
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`But the things that are stored, the values M are not, it’s not nebulous
`collection. They’re stored at specific locations defined by this hash value H,
`which is computed from a hash function generator based on the software
`program that the user is trying to use.
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`IPR2021-01338
`Patent 6,411,941 B1
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`In order to clarify that, Dr. Wolfe in his second declaration had a very
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`short response. And he said it’s not a nebulous collection, it is basically just
`a table. And that’s shown on slide 51 or our demonstratives. He did a very
`simple illustration of that.
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`That has been our position from the start. It is still our position now.
`It’s a data structure. It’s managed by Update Unit 36. It’s held in non-
`volatile memory 37.
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`We think the Board should reject Ancora’s argument here for three
`reasons. Number one, it’s just not clear. As I said a moment ago, their
`argument about there being a nebulous collection of data stored in non-
`volatile memory 37 is actually not how Hellman works. So that’s enough to
`reject it.
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`There’s also no support from any expert testimony for Ancora’s
`position. That’s just attorney argument for seeking Hellman and Dr.
`Wolfe’s explanation of this element. That on its own is enough to reject it.
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`It’s also not supported by the 941 Patent itself. So, what is a
`verification structure? The 941 Patent just won’t tell us. It uses the phrase,
`but it never tells us what it requires.
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`Ancora seems to be suggesting it’s, it needs something more than
`Hellman has, but there’s no basis to find that in the 941 Patent. 941 Patent
`uses the phrase, and the only real characterization it gives is that it is set up.
`
`And, on slide 49 you’ll see the, pardon me on slide 48. If you see the
`citation there at the bottom there, it’s column 6, lines 17 through 21, that’s
`really the most detailed characterization we get for verification structure in
`the 941 Patent.
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`IPR2021-01338
`Patent 6,411,941 B1
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`It doesn’t say what its structure is. Doesn’t say how it’s organized.
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`Doesn’t give you an addressing scheme. Doesn’t give you any of the things
`that Hellman actually does give you.
`All it says is that in some embodiment setting up a verification
`structure is finding a key and allotting memory space. Hellman has that.
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`So whatever verification structure is Hellman has that, and it has
`more.
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`I’m going to go on now to the next issue, the motivation to combine
`Hellman and Chou. So just a brief refresh on the basis of this combination.
`
`On slide 54 of our demonstratives, we have the Figure 1 from the 941
`Patent. On the right we have Figure 6 from Hellman with some markup that
`we’ve added that we presented in the petition.
`Hellman has the permanent memory of the ROM there in red, just like
`the 941 Patent. It has the RAM in green, just like the 941 Patent has.
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`It has what it calls non-volatile memory 37, and it tells us that non-
`volatile memory 37 should be CMOS RAM or EE prom.
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`It does not say that that’s the BIOS memory, but that comes from
`Chou. Chou tells us both that in the late ‘90s as of the priority date of this
`patent, the EE prom was increasingly being used for BIOS memory.
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`And it actually contrasts the EE prom over CMOS RAM, the very two
`things that Hellman himself considered.
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`It also tells you a benefit to storing sensitive information in that EE
`prom. The combination arises from Chou’s own teaching, as well as three
`other reasons that we gave in the petition.
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`IPR2021-01338
`Patent 6,411,941 B1
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`JUDGE DANG: I have a question, counselor. Ok, so in Hellman
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`there’s no talk about BIOS at all.
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`MR. CANAVERA: That’s right.
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`JUDGE DANG: So, in Hellman, we don’t know where the software
`is, right?
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`MR. CANAVERA: Oh, the software package 17?
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`JUDGE DANG: Yes, the one that’s being verified.
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`MR. CANAVERA: That’s right. We explained in the petition that it
`would be stored in the temporary memory 28 for operation, but it does not
`tell us where it comes from before that. That’s right.
`
`JUDGE DANG: Ok, so and then in Chou, the program, the routine is
`a BIOS routine. And the purpose of Chou is putting the verification along
`with the verification, I mean with the routine itself.
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`So, my question is, are you from that, saying that you modify Hellman
`to put I guess, the, well, you don’t even have a BIOS routine. So on, I guess
`you know, can you clarify as to your, your, you know, I guess your
`motivation to basically just fix Hellman so that it will be just like Chou
`without hindsight?
`
`MR. CANAVERA: Yes, certainly.
`
`The short answer to that is there’s no hindsight because Chou itself
`tells us to do this. But if I could explain.
`JUDGE DANG: Ok.
`MR. CANAVERA: And I think Your Honor might be asking there is
`also sort of an antecedent, a first step which is would there be BIOS in
`Hellman in the combination.
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`IPR2021-01338
`Patent 6,411,941 B1
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`JUDGE DANG: Right.
`MR. CANAVERA: And then would non-volatile memory 37 be the
`BIOS memory.
`JUDGE DANG: Right.
`MR. CANAVERA: So, let me just briefly address the first point,
`which is and we explained this in the petition and Dr. Wolfe explained it that
`you would have BIOS in Hellman as of the priority date for several reasons.
`The first one is Hellman is a 1983 Disclosure, and it is a disclosure
`that gives you embodiments like a computer with a CPU, and computer
`programs, but it also gives you a record player, a video game player.
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`So, in that sense it’s not surprising that these figures of Hellman don’t
`say BIOS because there are configuration, there are products that probably
`didn’t have BIOS.
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`But when a person skilled in the art is reading Hellman in the late ‘90s
`as Dr. Wolfe explained, he understands that in the computer embodiment,
`which has got a CPU and it’s running computer programs, it has BIOS
`because effectively all computers at that time had BIOS.
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`And this is not just his opinion. Ancora said this during prosecution
`and this panel, or this Board has previously credited that statement.
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`So that addresses the question of would there be BIOS. And there
`would because, because of the date of the invention. Chou shows us a
`regular computer that has BIOS so that’s somewhat unsurprising. And also
`on Ancora’s own statements. So, there would be BIOS.
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`IPR2021-01338
`Patent 6,411,941 B1
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`So, the second question would non-volatile memory 37 be the BIOS
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`memory, and I’ll address that. We gave four reasons for why that would be
`the case.
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`The clearest one is Chou itself, and I have on slide 56 Chou’s teaching
`on this. Chou said says, and actually I should say in the paragraph before
`what I’m showing on slide 56, Chou says well in the past it was common to
`use CMOS RAM for storing passwords.
`But hey, that has the problem if you just delete that from the CMOS
`RAM, or cut the power to the CMOS RAM, then you can just get rid of the
`passwords altogether.
`In that context, Chou says well nowadays, EE prom is more and more
`commonly used for BIOS memory. And the benefit being that you can
`update the BIOS routines.
`But the key thing on slide 56 is Hellman said, pardon me, Chou says
`there’s a benefit to storing the passwords, the security routine, which Chou
`was adding anew, in that BIOS memory.
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`Because if you delete that from the BIOS memory, the computer just
`won’t start. And as Dr. Wolfe explained, what does that mean?
`That means Chou saying I’ll put my sensitive data amidst the BIOS
`programs, and if someone tries to wipe that out, they’ve wiped out the BIOS.
` The thing just won’t start.
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`This is actually the same motivation noticed by the 941 Patent in, or
`on column 3, that if you put data amidst the BIOS, it just increases the risk
`of trying to mess with that data, to tamper with that data.
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`IPR2021-01338
`Patent 6,411,941 B1
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`And Chou says to do that, do that so people can’t bypass the sensitive
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`data you’ve stored there. They can’t delete it. They can’t edit it. And that’s
`just from Chou itself.
`That’s the primary reason to use, to put the licensed records in, this
`sensitive data that Hellman itself really wants to avoid tampering with, to put
`those amidst the BIOS. So, people can’t tamper with them.
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`And those fit together. Because Hellman tells us how to avoid
`tampering with the licensed values M, but only when they’re transmitted
`from the server to the base unit. They’re encrypted for that transmission.
`He provides some other security techniques.
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`But once they’re stored on the device, they’re not encrypted, they are
`plain text in Hellman’s base disclosure. So, as we explained in the petition,
`Dr. Wolfe’s declaration, a person of skill in the art reads Hellman, sees a
`great interest in stopping software piracy and the tampering with the values
`M.
`Hellman solves part of that problem but doesn’t solve that problem on
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`the device itself. And that’s where Chou comes in. Chou says if you have
`data that you don’t want tampered with, here’s one way to protect it. Put it
`in the BIOS data.
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`Again, it’s actually just what the 941 Patent notice, which is the Chou
`notice that, noticed that earlier.
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`We have other, the three other motivations to combine as well. Slide
`57 is one of those. And I was looking for this quote, Your Honor, earlier to
`the question about whether there be BIOS in Hellman, and this is the Patient
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`Owner’s representation of the Patent Office, on the bottom of slide 57, and
`the prosecution history.
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`And, the Board is previously credited that as saying yes, there would
`be BIOS in Hellman.
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`So, slide 57 has the second motivation to combine, which is this.
`Hellman describes non-volatile memory 37 and says this could be CMOS
`RAM or EE prom. Those are two very unique types of storage.
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`Chou says BIOS memory happened to be CMOS RAM where EE
`prom. And the EE prom is better. So, when a person skilled in the art is
`reading Hellman and Chou together in the late ‘90s, there’s already one
`motivation from the thing we just read about the reducing tampering.
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`The other one is that Hellman’s describing that those very things that
`Hellman, that Chou’s saying that those very things that Hellman said were
`good for storing BIOS are the exact places Hellman says I want to store my
`values M. That’s a separate but related motivation to combine.
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`Then we had two others, slide 58 and slide 59. Case law KSR tells us
`to look to the context, right. And one of those is looking at Hellman in the
`late ‘90s, where am I going to put the licensed values M.
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`Hellman tells us do it in CMOS RAM or EE prom. Dr. Wolfe
`explained in the last ‘90s a computer didn’t have many of those. They were
`not cheap storage mechanisms. They were a specialty.
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`
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