Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 1 of 21 Page ID #:1660
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`SACV 19-2192-GW-ADSx
`Ancora Technologies, Inc v. TCT Mobile (US), Inc., et al.
`
`Case No.
`Title
`
`Date November 12, 2020
`
`Present: The Honorable GEORGE H. WU, UNITED STATES DISTRICT JUDGE
`Javier Gonzalez
`Terri A. Hourigan
`Tape No.
`Deputy Clerk
`Court Reporter / Recorder
`Attorneys Present for Plaintiffs:
`Attorneys Present for Defendants:
`Marc Lorelli
`Kyle R. Canavera
`John P. Rondini
`John P. Schnurer
`PROCEEDINGS:
`TELEPHONIC MARKMAN HEARING
`
`The Court’s Final Ruling on Claim Construction (Markman) Hearing is circulated and attached hereto.
`Court and counsel confer. For reasons stated on the record, the hearing is continued to November 19,
`2020 at 8:30 a.m. The parties are to meet and confer, and attempt to resolve this matter. A joint status
`report is to be filed by noon on November 17, 2020.
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 1 of 1
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`Initials of Preparer
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`Ancora Techs., Inc. v. TCT Mobile (US) Inc. et al.; Case No. 8:19-cv-02192-GW-(ASx) (Lead Case);
`Case No. 2:20-cv-01252-GW-(ASx) (Consolidated Case)
`Final Ruling on Claim Construction (Markman) Hearing
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`
`
`Introduction
`I.
`Plaintiff Ancora Techs., Inc. (“Plaintiff” or “Ancora”) filed suit against TCL Corp., TCL
`
`Commc’n Ltd., TCL Commc’n Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd. on August
`27, 2019, alleging infringement of U.S. Patent No. 6,411,941 (“the ’941 Patent”). Ancora Techs.,
`Inc. v. TCL Corp. et al., Case No. 2:20-cv-01252-GW-(ASx) (“Consolidated Case”), Docket No.
`1; see also Docket No. 12 (Consolidated Case Amended Complaint).
`On November 12, 2019, TCT Mobile (US) Inc. and Huizhou TCL Mobile Commc’n Co.,
`Ltd., separately filed suit against Plaintiff, seeking declaratory judgement of non-infringement of
`the ’941 Patent.
` TCT Mobile (US) Inc. et al. v. Ancora Techs., Inc., Case No.
`8:19-cv-02192-GW-(ASx) (“Lead Case”), Docket No. 1. The two actions have been consolidated
`so that Plaintiff now accuses TCT Mobile (US) Inc., Huizhou TCL Mobile Commc’n Co., Ltd.,
`Shenzhen TCL Creative Cloud Tech. Co., Ltd., TCL Corp., TCL Commc’n Ltd., TCL Commc’n
`Holdings Ltd., and TCL Commc’n Tech. Holdings Ltd., TCT Mobile (US) Holdings Inc., TCT
`Mobile, Inc., TCT Mobile Int’l Ltd. (collectively, “Defendant” or “TCL”) of infringing the
`’941 Patent. Docket No. 29; see also Docket No. 23 (stipulation to realign parties); Docket No. 24
`(First Amended Complaint); Docket No. 44 (Second Amended Complaint).1
`Now pending are some of the parties’ claim construction disputes. The parties have
`submitted a Joint Claim Construction and Prehearing Statement. See Docket No. 49. The parties
`have also filed various claim construction briefs and supporting documents:
` Plaintiff Ancora’s Opening Claim Construction Brief (Docket No. 52); Defendant
`TCL’s Opening Claim Construction Brief (Docket No. 53)
` Plaintiff Ancora’s Responsive Claim Construction Brief (Docket No. 54); Defendant
`TCL’s Responsive Claim Construction Brief (Docket No. 55)
`The Court construes the disputed terms as stated herein.
`II. Background
`For purposes of the parties’ claim construction disputes, the parties request construction of
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`1 Citations are to the Lead Case unless otherwise noted.
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`seven terms in the asserted claims of the ’941 Patent, titled “Method of Restricting Software
`Operation Within a License Limitation.” The ’941 Patent issued on June 25, 2002. The ’941
`Patent relates to “a method and system of identifying and restricting an unauthorized software
`program's operation.” ’941 Patent at 1:6-8.
`Claim 1 of the ’941 Patent recites:
`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 memory area; the method comprising the steps of:
`selecting a program residing in the volatile memory,
`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,
`verifying the program using at least the verification structure from the
`erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`’941 Patent, Claim 1.
`III. Legal Standard
`Claim construction is an interpretive issue “exclusively within the province of the court.”
`Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). It is “a question of law in the
`way that we treat document construction as a question of law,” with subsidiary fact-finding
`reviewed for clear error to Fed. R. Civ. P. 52(a)(6). Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S. Ct. 831, 837-40 (2015). The claim language itself is the best guide to the meaning of a
`claim term. See Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). This is because
`the claims define the scope of the claimed invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312
`(Fed. Cir. 2005). But a “person of ordinary skill in the art is deemed to read the claim term not
`only in the context of the particular claim in which the disputed term appears, but in the context of
`the entire patent.” Id. at 1313. Thus, claims “must be read in view of the specification,” which is
`“always highly relevant to the claim construction analysis.” Phillips, 415 F.3d at 1315 (internal
`quotations omitted).
`Although claims are read in light of the specification, limitations from the specification
`must not be imported into the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288
`(Fed. Cir. 2009). “[T]he line between construing terms and importing limitations can be discerned
`with reasonable certainty and predictability if the court’s focus remains on understanding how a
`person of ordinary skill in the art would understand the claim terms.” Phillips, 415 F.3d at 1323.
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`The prosecution history may lack the clarity of the specification, but it is “another
`established source of intrinsic evidence.” Vederi, 744 F.3d at 1382. “Like the specification, the
`prosecution history provides evidence of how the PTO and the inventor understood the patent.”
`Phillips, 415 F.3d at 1317 (citations omitted). “Furthermore, like the specification, the prosecution
`history was created by the patentee in attempting to explain and obtain the patent.” Id. “Yet
`because the prosecution history represents an ongoing negotiation between the PTO and the
`applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Id.
`Claim construction usually involves resolving disputes about the “ordinary and customary
`meaning” that the words of the claim would have had “to a person of ordinary skill in the art in
`question at the time of the invention.” Phillips, 415 F.3d at 1312-13 (internal quotations and
`citations omitted). But in some cases, claim terms will not be given their ordinary meaning because
`the specification defines the term to mean something else. “[A] claim term may be clearly
`redefined without an explicit statement of redefinition,” so long as a person of skill in the art can
`ascertain the definition by a reading of the patent documents. Id. at 1320; see also Trustees of
`Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1364 (Fed. Cir. 2016).
`Where the patent itself does not make clear the meaning of a claim term, courts may look
`to “those sources available to the public that show what a person of skill in the art would have
`understood disputed claim language to mean,” including the prosecution history and “extrinsic
`evidence concerning relevant scientific principles, the meaning of technical terms, and the state of
`the art.” Phillips, 415 F.3d at 1314 (internal quotations omitted). Sometimes, the use of “technical
`words or phrases not commonly understood” may give rise to a factual dispute, the determination
`of which will precede the ultimate legal question of the significance of the facts to the construction
`“in the context of the specific patent claim under review.” Teva, 135 S. Ct. at 841, 849. “In some
`cases, the ordinary meaning of claim language as understood by a person of skill in the art may be
`readily apparent even to lay judges, and claim construction in such cases involves little more than
`the application of the widely accepted meaning of commonly understood words.” Phillips,
`415 F.3d at 1314. “In such circumstances, general purpose dictionaries may be helpful.” Id.
`IV. Discussion
`A. Agreed Claim Terms
`The parties have agreed to constructions for the following claim terms (see Docket
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`these examples are limiting as they provide “context for the characterization of the invention as a
`whole,” and because “the specification never discloses any embodiment where the license record
`in the verification structure is not encrypted using the unique key.” See Docket No. 53 at 15-16.
`But as Plaintiff notes, claim terms should not be limited just because the specification discloses a
`single embodiment. See Docket No. 54 at 10 (citing Phillips, 415 F.3d at 1323).
`
`Further, Claim 1 recites that the “verification structure” is set up “in the erasable, non-
`volatile memory of the BIOS.” ’941 Patent, Claim 1. Claim 7 recites that the “set[ting] up a
`verification structure” step of Claim 1 includes establishing (or certifying the existence of) “a
`pseudo-unique key in a first non-volatile memory area of the computer; and establishing at least
`one license-record location in the first nonvolatile memory area or in the erasable, non-volatile
`memory area of the BIOS.” ’941 Patent, Claim 7. Similarly, the specification states that setting
`up the verification structure only requires establishing (or certifying the existence of) a key and at
`least one license-record location in the non-volatile memory:
`Setting up (18) the verification structure includes the steps of: establishing or
`certifying the existence of a pseudo-unique key in the first non-volatile memory
`area; and establishing at least one license-record location in the first or the second
`nonvolatile memory area.
`’941 Patent at 6:18-22. These references to the “set[ting] up a verification structure” step without
`mentioning encryption suggest that encryption is not required.3
`
`Defendant asserts that the description of the “[s]etting up (18) the verification structure” in
`the specification is followed by an explanation that the “establishing a license-record” step
`includes “forming a license-record by encrypting of the contents used to form a license-record …
`using the key.” See Docket No. 55 at 12-13 (citing ’941 Patent at 6:23-26). The specification
`states that the “establishing a license-record” step further includes “establishing the encrypted
`license-record in one of the at least one established license-record locations.” ’941 Patent at
`6:26-28 (emphasis added). As Defendant admits, however, “the cited passage describes sub-steps
`that can be included in the step of ‘[s]etting up (18) the verification structure.’” See Docket 55 at
`
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`3 The specification also discloses that the “license record may be held in either encrypted or explicit form.” See Docket
`No. 52 at 11 (citing ’941 Patent at 1:55). As Defendant points out, however, the next paragraph shows that this excerpt
`describes the state of the license-record before the verification structure is set in the BIOS. See Docket No. 55 at 13-
`14 (citing ’941 Patent at 1:59-62 (“Now, there commences an initial license establishment procedure, where a
`verification structure is set in the BIOS so as to indicate that the specified program is licensed to run on the specified
`computer.”)). But later the specification states that “[a]ny component [of a license-record] may, if desired, be
`encrypted.” ’941 Patent at 5:39.
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`12. Claim 8 already includes both of these-sub-steps. See ’941 Patent, Claim 8. Defendant has
`not shown that the “set[ting] up a verification structure” step of Claim 1 requires storing encrypted
`information.
`
`The prosecution history does not support Defendant’s construction either. The applicant’s
`arguments during prosecution suggest that setting up a verification structure requires the use of a
`key. The applicant stated that “the client system ID of Misra, is similar to the pseudo-unique key
`recited in claims 1 and 20.’” See Docket No. 52-3 at ANCC000151 (emphasis in original). As
`Defendant argues, then-pending Claim 1 did not explicitly recite a “pseudo-unique key,”
`suggesting that the term “verification structure” includes a pseudo-unique key. See Docket No. 53
`at 16-17; Docket No. 52-3 at ANCC000130. Further, the applicant argued that “[i]n the present
`method, the verification structure is formed by using a unique key for each computer and license
`record information in the software.” Docket No. 52-3 at ANCC000095. Although these statements
`may not amount to an “explicit disclaimer of subject matter sufficient to vary the scope of the
`claim,” they are still helpful in determining the ordinary meaning of the term “verification
`structure” within the relevant art. See Novartis Pharm., Corp. v. Eon Labs Mfg. Inc.,
`363 F.3d 1306, 1311 (Fed. Cir. 2004).4
`
`Applicant’s remarks on encryption, however, are ambiguous at best. The applicant argued
`that “[t]he license ID of Misra is similar to the verification structure and license information recited
`in claims 1 and 20, respectively.” Docket No. 52-3 at ANCC000151 (emphasis in original).
`According to Defendant, Misra discloses cryptographically signing the license ID with “a signing
`key,” showing that setting up the verification structure requires encryption. See Docket No. 53 at
`17 (citing Docket No. 53-9 at 10:60-67). But this is not included in the applicant’s remarks. At
`most, the applicant argued that the license ID “may be a digital certificate.” Docket No. 52-3 at
`ANCC000151. This is not enough to limit the term “set[ting] up a verification structure.”
`
`Finally, “set[ting] up a verification structure” does not require a key “unique to the
`computer.” As stated throughout, the key may be “pseudo-unique,” which the specification states
`“may relate to a random bit string (or to an assigned bit string) of sufficient length such that: there
`is an acceptably low probability of a successful unauthorized transfer of licensed software between
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`4 Plaintiff’s argument that the prosecution history describes embodiments without using a key is unpersuasive. See
`Docket No. 54 at 12 (citing Docket No. 52-3 at ANCC000092). Applicant’s statement that “[i]n a preferred
`embodiment, a key resides in a first non-volatile part of a computer’s memory,” describes one possible location for
`the key, not that the key is optional.
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`id., Fig. 1 (reproduced below). The specification provides the following examples of the
`license-record fields: “Application names (e.g. Lotus 123), Vendor name (Lotus inc.), and number
`of licensed copies (1 for stand alone usage, >1 for number of licensed users for a network
`application).” Id. at 5:30-34. The description and figure show that the license-record is comprised
`of assorted information from the program without necessarily indicating a right to use the program.
`
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`Defendant has not shown that the plain and ordinary meaning of a license-record to one of
`
`ordinary skill in the art when viewed in light of the specification is limited to information indicating
`a “right to use.” The specification states consistently that the program is licensed “to run” and
`suggests that the terms “licensed” and “verified” are synonymous. See ’941 Patent at 1:54-55
`(“each application program that is to be licensed to run on the specified computer”); 1:61-62 (“the
`specified program is licensed to run on the specified computer”); 2:20 (“the program is verified to
`run on the computer”); 2:28 (“attempt to run a program at an unlicensed site”); 2:30 (“verified to
`run”); 2:36 (“Suppose now that a hacker attempts to run…”). Defendant also relies on the
`applicant’s remarks about the “license ID” of the prior art made during prosecution of the
`’941 Patent. See Docket No. 53 at 19. The applicant stated that the license ID “may be a digital
`certificate indicating the right to use” and “is similar to the verification structure and license
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`recognized by an operating system as a storage
`device; and (iii) does not have a file system”
`Defendant asks that the term “memory of the BIOS” be limited based on the doctrine of
`
`prosecution disclaimer. See Docket No. 53 at 10. The Court finds that prosecution disclaimer
`does not apply.
`
`Defendant relies on arguments the applicant made during the prosecution of the ’941 Patent
`to overcome a rejection under 35 U.S.C. § 103 in light of two prior art references, i.e. Misra and
`Ewertz. See Docket No. 54 at 12-13. Produced below is the relevant part of the file history:
`Moreover, the present invention proceeds against conventional wisdom in the art.
`Using BIOS to store application data such as that stored in Misra’s local cache for
`licenses is not obvious. The BIOS area is not considered a storage area for
`computer applications. An ordinary skilled artisan would not consider the BIOS a
`storage medium to preserve application data for at least two reasons.
`First, OS does not support this functionality and is not recognized as a hardware
`device like other peripherals. Every OS provides a set of application program
`interfaces (APIs) for applications to access storage devices such as hard drives,
`removable devices, etc. An ordinary person skilled in the art makes use of OS
`features to write date to storage mediums. There is no OS support whatsoever to
`write data to the system BIOS. Therefore, an ordinary person skilled in the art
`would not consider the BIOS as a possible storage medium. Furthermore, it is
`common that all peripheral devices in the PC are listed and recognized by the OS
`except for the BIOS. This supports the fact that the BIOS is not considered a
`peripheral device. Accordingly, an ordinary person skilled in the art would not
`consider the BIOS for any operation, including writing to the BIOS.
`Second, no file system is associated with the BIOS. Every writable device
`connected to the PC is associated with an OS file system to arrange and manage
`data structures. An example for such a file system would be FAT, FAT32, NTFS,
`HPFS, etc. that suggests writing data to the writable device. No such file system
`is associated with the BIOS. This is further evidence that OS level application
`programmers would not consider the BIOS as a storage medium for license data.
`See Docket No. 52-3 at ANC000154 (emphasis added). Defendant argues that these remarks “are
`a textbook case of prosecution disclaimer.” See Docket No. 54 at 13.
`
`The cited remarks do not amount to prosecution disclaimer. Statements made during
`prosecution that “merely provide an example to illustrate differences between the invention and
`the prior art” do not amount to prosecution disclaimer. Gemstar-TV Guide Int’l, Inc. v. Int’l Trade
`Comm’n, 383 F.3d 1352, 1375 (Fed. Cir. 2004); see also Purdue Pharma L.P. v. Endo Pharm.
`Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (“While it is true that Purdue relied on its ‘discovery’
`of the four-fold dosage range to distinguish its claimed oxycodone formulations from other prior
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`art opioids, Purdue’s statements do not amount to a clear disavowal of claim scope.”). The remarks
`cited by Defendant describe the prior art methods of storing verification programs and explain that
`the claimed method “proceeds against conventional wisdom in the art.” Docket No. 52-3 at
`ANC000154. The two reasons the applicant gave for why an ordinary skilled person “would not
`consider the BIOS a storage medium” were: 1) the lack of operating system (OS) support and
`recognition, and 2) the lack of associated file system. Id. After describing each reason, the
`applicant concluded that a person of ordinary skill in the art would not conventionally consider the
`BIOS to be a storage medium. Id. (“an ordinary person skilled in the art would not consider the
`BIOS for any operation, including writing to the BIOS” and “OS level application programmers
`would not consider the BIOS as a storage medium for license data,” respectively) (emphasis
`added). These remarks were not intended to limit the invention but rather to describe conventional
`reasons why the BIOS was not used before the claimed method.
`
`The Examiner’s remarks do not support prosecution disclaimer either. Defendant
`highlights that the Examiner stated in his reasons for allowing the ’941 Patent that “it is well known
`to those of ordinary skill in the art that a computer BIOS is not setup to manage a software license
`verification structure.” See Docket No. 54 at 13 (citing Docket No. 52-3 at ANC000162). In the
`next sentence, however, the Examiner stated that “[t]he present invention overcomes this difficulty
`by using an agent to set up a verification structure in the erasable, non-volatile memory of the
`BIOS.” Docket No. 52-3 at ANC000162. The Examiner also stated that “the closest prior art
`systems … do not teach licensed programs running at the OS level” interacting with the BIOS,
`which the claimed method is supposed to overcome. Id. Thus, the Examiner also understood the
`applicant’s remarks to refer to conventional wisdom at the time and the prior art.
`
`Notably, the Federal Circuit also found that these remarks described the prior art when
`analyzing the prosecution history to construe the term “program.” See Ancora Techs., Inc. v.
`Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014). Summarizing the file history, the Circuit stated that
`“[t]he applicants explained that their invention differed from the prior art in that it both operated
`as an application running through an operating system and used the BIOS level for data storage
`and retrieval − a combination that was not previously taught and that an ordinarily skilled
`application writer would not employ[.]” Id. at 735-36. In other words, the applicant argued that
`the claimed method could operate in a way contrary to conventional methods.
`
`The specification also does not support narrowing the term “memory of a BIOS.”
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`of the ’941 Patent recites: “wherein using an agent to set up the verification structure includes the
`steps of: establishing or certifying the existence of a pseudo-unique key in a first non-volatile
`memory area of the computer; and establishing at least one license-record location in the first
`nonvolatile memory area or in the erasable, non-volatile memory area of the BIOS.” ’941 Patent,
`Claim 7 (emphasis added). Claim 13 also depends on Claim 1 and recites: “wherein a unique key
`is stored in a first non-volatile memory area of the computer.” Id., Claim 13 (emphasis added).
`According to Defendant, the two recited memories of Claim 7 must be different.7 See Docket No.
`53 at 23.
`
`The language of Claim 7 suggests that the two memories are different. The plain and
`ordinary meaning for the term “first” suggests that there is a separate “second” memory. C.f.
`3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003)
`(“use of the terms ‘first’ and ‘second’ is a common patent-law convention to distinguish between
`repeated instances of an element or limitation”). The claims do not recite an explicit second
`memory, however, so the Court turns to the rest of the claim to determine what the term “first
`non-volatile memory area of the computer” means. “The disjunctive ‘or’ plainly designates that a
`series describes alternatives.” See SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199
`(Fed. Cir. 2013). Further, construing “a first nonvolatile memory area” to include “the erasable,
`non-volatile memory area of the BIOS” would render “or in the erasable, non-volatile memory
`area of the BIOS” superfluous. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
`(Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred
`over one that does not do so.”). Thus, the language of the claim implies that the “erasable,
`non-volatile memory of the BIOS” is a separate “second” memory.
`The Court next looks to the specification for what the “first” non-volatile memory is where
`no explicit “second” memory is recited in the claims. “Without a customary meaning of a term
`within the art, the specification usually supplies the best context for deciphering claim meaning.”
`Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 991 (Fed. Cir. 2007) (citing
`Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir.2004)). The Abstract
`
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`7 The parties do not dispute that this term should have the same meaning in both claims. See In re Varma, 816 F.3d
`1352, 1363-64 (Fed. Cir. 2016) (“[T]he principle that the same phrase in different claims of the same patent should
`have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in
`different claims.”).
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`states that the disclosed method has “a first non-volatile memory area,” and “a second non-volatile
`memory area,” where the verification structure is set up “in the non-volatile memories.”
`’941 Patent, Abstract (emphasis added). Similarly, the specification states that “[i]n its broadest
`aspect,” the disclosed method includes “a first non-volatile memory area” and “a second non-
`volatile memory area,” with the verification structure set up “in the non-volatile memories.” Id.
`at 2:62-3:1 (emphasis added). The specification also states that the disclosed method “strongly
`relies on the use of a key and of a record, which have been written into the non-volatile memory
`of a computer.” Id. at 1:40-43. Thus, the broadest embodiment of the ’941 Patent makes no
`distinction between the non-volatile memories.
`In describing a “non-limiting” exemplary embodiment, the specification states with regard
`to the key used with the verification structure that “[i]t is important to note that the key is stored
`in a non-volatile portion of the BIOS, i.e. it cannot be removed or modified.” ’941 Patent at
`1:50-52. The specification then states that the verification structure is set in the BIOS of this
`embodiment by storing a license-record in “another (second) non-volatile section of the BIOS, e.g.
`E2PROM (or the ROM).” ’941 Patent at 1:59-2:1; see also id. at 1:50-52. The specification notes
`that “unlike the first non-volatile section, the data in the second non-volatile memory may
`optionally be erased or modified.” ’941 Patent at 2:1-3. Thus, according to this embodiment, the
`first non-volatile section of the BIOS that contains the key cannot also be the second, erasable,
`non-volatile section that contains the license-record.
`Under the “Detailed Description of a Preferred Embodiment,” the specification describes
`the “[s]etting up (18) the verification structure” step of the described preferred embodiment (shown
`in Fig. 2). This description matches the language of Claim 7 except that the license-record location
`is established in “the first or the second” nonvolatile memory area, and not limited to the BIOS.
`’941 Patent at 6:18-22 (“establishing at least one license-record location in the first or the second
`nonvolatile memory area”) (emphasis added). Rather than explicitly using the terms “erasable”
`or “non-erasable,” this section describes the two memories with examples: “a first non-volatile
`memory area (4) (e.g. the ROM section of the BIOS)” and “a second non-volatile memory area (5)
`(e.g. the E2PROM section of the BIOS).” ’941 Patent at 5:12-15. The section also states that
`“[t]he first non-volatile memory includes a pseudo-random identification key (8)” and “[t]he
`second non-volatile memory includes a license-record are (9) e.g. which contains at least one
`encrypted license-record.” Id. at 5:19-27. Thus, the language describing this embodiment suggests
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`Nintendo - Ancora Exh. 1014
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`Case 8:19-cv-02192-GW-AS Document 66 Filed 11/12/20 Page 18 of 21 Page ID #:1677
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`at least a preference for two separate memories.
`The Court next looks to the prosecution history for context. Similar to the described
`preferred embodiment of the specification, Claim 7 as originally filed recited that the
`license-record location is established in “the first or the second” nonvolatile memory area, and not
`limited to the BIOS. See Docket Nos. 53 at 24; 53-2 at 3. Claim 1 as originally filed recited that
`the verification structure is set up “in the non-volatile memories,” however. See id. at 2.
`The applicant also amended the relevant language of Claims 1 and 7 several times during
`prosecution of the ’941 Patent. The applicant first amended Claim 1 so that the first and second
`non-volatile memory areas as recited were “non-erasable,” the first non-volatile memory
`“accommodate[d] data that includes unique key,” and the verification structure was set up “in the
`second non-volatile memory.” See Docket No. 52-3 at ANC000101. Claim 1 was also revised to
`recite that the verification structure “accommodates data that includes at least one license record.”
`Id. In the Remarks, the applicant explained that “in a preferred embodiemt [sic], a key resides in
`a first non-volatile part of a computer’s memory,” while the verification structure “is formed to
`include one or more license records … and resides in a second non-volatile part of the memory.”
`Id. at ANC000092. Despite the added “non-erasable” limitation, however, the applicant clarified
`that “[t]he second non-volatile part is erasable and therefore license data in the verification
`structure can be modified.” Id.
` Subsequently, the applicant amended Claim 1 to remove two relevant limitations: “first,
`non-erasable, non-volatile memory area” and “the first non-volatile memory accommodates data
`that includes unique keys.” See id. at ANC000130. The “second, non-erasable, non-volatile
`memory area” limitation was also revised to read “an erasable, non-volatile memory area of a
`(BIOS) of the computer.” Id. (emphasis added); see also id. at ANC000160 (changing “(BIOS)”
`to “BIOS”). Claim 1 was further revised to reci