UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES INC.,
`Patent Owner.
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`DECLARATION OF ANDREW WOLFE, PH.D., IN SUPPORT OF
`PETITIONERS' REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Roku EX1033
`Roku v. Ancora
`IPR2021-01406
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES INC.,
`Patent Owner.
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`DECLARATION OF ANDREW WOLFE, PH.D., IN SUPPORT OF
`PETITIONERS' REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Roku EX1033
`Roku v. Ancora
`IPR2021-01406
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`2.
`
`INTRODUCTION ........................................................................................... 1
`HELLMAN DISCLOSES THE “AGENT” LIMITATION. ........................... 2
`A.
`Patent Owner’s Construction Requiring that the Verification Structure
`Be Set Up Solely by “OS-Level Software” Is Unsupported and
`Incorrect. ................................................................................................ 2
`Hellman Renders Obvious the Claimed Agent Under Dr. Martin’s
`Construction. ......................................................................................... 9
`1.
`A POSA Would Have Implemented Hellman in Software Form.
` ..................................................................................................... 9
`A POSA Would Have Implemented Hellman As OS-Level
`Software, Specifically. ..............................................................16
`III. THE COMBINATION OF HELLMAN AND CHOU DISCLOSES THE
`“VERIFICATION STRUCTURE” LIMITATION. ......................................24
`IV. A POSA WOULD HAVE BEEN MOTIVATED TO COMBINE
`HELLMAN WITH CHOU AND SCHNECK. .............................................26
`A.
`Patent Owner’s Arguments Appear to Be Premised on a
`Misunderstanding of the Proposed Combination. ...............................26
`A POSA Would Have Been Motivated to Store Hellman’s Value “M”
`in Hellman-Chou’s Modified BIOS EEPROM. ..................................31
`Storing Hellman’s Encrypted “Authorization A” in “Non-Volatile
`Memory 37” Would Not Render Hellman Inoperable for its Intended
`Purpose. ...............................................................................................32
`CONCLUSION ..............................................................................................35
`
`B.
`
`C.
`
`V.
`
`
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`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`I.
`
`INTRODUCTION
`1.
`I previously submitted a declaration (EX1003) in this matter on behalf
`
`of Petitioners in support of their petition filed on August 24, 2021. I understand
`
`that the Board has instituted review, and that Patent Owner has submitted a
`
`response. I also understand that Patent Owner’s expert witness, Dr. David Martin,
`
`has submitted a declaration in support of Patent Owner’s response (EX2018). I
`
`have been asked to provide my technical review, analysis, and insight regarding
`
`both the Patent Owner’s response and Dr. Martin’s supporting declaration. As
`
`explained in more detail below, I disagree with many of Dr. Martin’s opinions and
`
`analysis.
`
`2. My background and qualifications were provided in paragraphs 6-17 of
`
`my prior declaration, and a copy of my CV was appended thereto as Appendix A.
`
`3. Since my prior declaration, I have reviewed and considered the
`
`following additional materials:
`
`Exhibit
`--
`1035
`
`1037
`
`1038
`1039
`1040
`
`Description
`Patent Owner’s Response (Paper 22)
`Transcript of the Deposition of David Martin, Ph.D.,
`July 14, 2022
`Denon DP-35F/DP-45F Instruction Manual, Nippon
`Columbia Co., Ltd.
`Excerpt from Dictionary of Computing, 4th ed., Oxford
`University Press, 1996
`U.S. Patent No. 5,568,552 to Davis
`Guttman, B., et al., Computer Security, National
`Institute of Standards and Technology, 1995)
`
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`U.S. Patent No. 6,411,941
`Description
`Kaliski, B., “PKCS #1: RSA Encryption,” RFC 2313,
`The Internet Society, Network Working Group, March
`1998
`U.S. Patent No. 5,724,425 to Chang et al.
`U.S. Patent No. 5,935,246 to Benson
`
`Exhibit
`
`1041
`
`1042
`1043
`
`II. HELLMAN DISCLOSES THE “AGENT” LIMITATION.
`A.
`Patent Owner’s Construction Requiring that the Verification
`Structure Be Set Up Solely by “OS-Level Software” Is
`Unsupported and Incorrect.
`Dr. Martin contends that the claimed “agent” is limited to pure
`
`4.
`
`software running “at the OS level.” EX2018, ¶129; EX1035, 140:18-141:12. As an
`
`initial matter, this construction is vague and unclear. Dr. Martin does not explain
`
`what “OS-level” means in this context, provide any examples of OS-level
`
`programs, or offer guidance about how to determine whether a program operates at
`
`the OS level. In his deposition, Dr. Martin seemed to provide varying criteria for
`
`making such a determination:
`
`•
`
`•
`
`•
`
`OS-level software “relates to programs that are running that use the
`running operating system services, as part of their operation,”
`EX1035, 100:8-22;
`“OS-level software can be thought of as running through the operating
`system,” id., 101:19-102:4;
`OS-level software “rel[ies] on operating system services and is doing
`so after the operating system is running,” id., 102:5-9, 105:4-10;
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`U.S. Patent No. 6,411,941
`These criteria are themselves ambiguous. Nevertheless, I disagree
`
`5.
`
`with Dr. Martin’s construction limiting the claimed “agent” to OS-level software
`
`based on the criteria set forth above. As an initial matter, the term “agent” is not
`
`limited to a pure software implementation. “Agent” is generally understood in the
`
`art to encompass both software and hardware. For example, the Oxford Dictionary
`
`of Computing (4th ed. 1996) defines “agent” as any “autonomous system that
`
`receives information from its environment, processes it, and performs actions on
`
`that environment.” EX1038, 11. The dictionary goes on to say that agents “may be
`
`software, hardware, or both.” Id. (emphasis added). Many patents and articles
`
`describe agents in various contexts consistent with this definition. For example,
`
`U.S. Patent No. 5,568,552—an Intel patent filed in 1995—describes a “hardware
`
`agent” for enforcing software licenses. The hardware agent comprises a processing
`
`unit and non-volatile memory that stores encryption keys for determining whether
`
`particular software is licensed. See EX1039, 1:19-25, 3:1-10, 8:55-9:12. Thus, I
`
`disagree that agents are limited to software.
`
`6.
`
`But even if the claimed agent in the ’941 patent were limited to a
`
`software-only implementation, it makes little sense to refer to the agent as if it acts
`
`alone, without the assistance from any hardware, to set up the claimed verification
`
`structure. All software operates using hardware; software, by itself and in the
`
`abstract, is not capable of performing any functions, let alone those claimed in the
`
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`U.S. Patent No. 6,411,941
`’941 patent. Dr. Martin seemed to acknowledge this at his deposition. EX1035,
`
`106:12-107:10, 111:19-22 (acknowledging that the claimed agent runs on a
`
`computer or multiple computers).
`
`7.
`
`The plain language of the claims supports this commonsense
`
`understanding. Claim 1 of the ’941 patent recites “using an agent to set up a
`
`verification structure” in non-volatile memory. EX1001, 6:64-65; see also id.,
`
`8:39-40 (independent claim 18 reciting a similar limitation). The agent is not that
`
`which uses the agent. Thus, by its plain terms, the claim merely requires that an
`
`agent be “used” to set up the claimed verification structure; it does not foreclose
`
`hardware from acting with the agent to do so. Again, Dr. Martin expressly
`
`acknowledged this at his deposition. EX1035, 129:9-130:22 (Dr. Martin testifying
`
`that while claim 1 “requires the use of the agent to set up the verification
`
`structure,” it “does not exclude the possibility of using additional other entities or
`
`operations in service of using an agent to set up a verification structure”); see also
`
`id., 131:14-19 (“As I read this limitation, I don’t see anything precluding the use of
`
`hardware in setting up the verification structure.”).
`
`8.
`
`On this point, I note that claim 3, which depends from claim 1, recites
`
`that the verification structure is set up using a “license authentication bureau.”
`
`EX1001, 7:5-20; see also id., 3:33-44 (noting that the bureau “can participate in …
`
`establishing the license record in the second non-volatile memory”), 3:51-61
`
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`U.S. Patent No. 6,411,941
`(stating that “setting up a verification structure” can be performed “[a]ccording to
`
`one example of using the bureau”). The ’941 patent makes clear that the claimed
`
`bureau is a “telecommunications accessible processor”—i.e., hardware. Id., 3:33-
`
`44; EX1035, 112:7-22, 115:3-18 (Dr. Martin acknowledging that the bureau could
`
`be hardware). For claim 3 to make sense, claim 1 must be broad enough to permit
`
`hardware to be used in conjunction with the claimed agent to set up the verification
`
`structure.
`
`9.
`
`Likewise, even if the claimed agent is limited to software, it is not
`
`limited to OS-level software, as Dr. Martin contends. The specification does not
`
`refer to an agent, let alone one that operates at the OS level, specifically. In fact,
`
`the ’941 patent specification does not refer to an operating system at all. EX1035,
`
`133:22-135:3, 139:13-16. And the only passages of the ’941 patent that describe
`
`setting up the verification structure do not specify where the agent resides or when
`
`it is executed. See EX1001, Abstract, 1:59-62, 2:62-3:3, 3:51-61, 6:17-21.
`
`10. Dr. Martin’s cited extrinsic evidence does not change my view. See
`
`EX2018, ¶126. He relies on various dictionary definitions and articles that use the
`
`words “agent,” but none suggests that the described agent is implemented at the
`
`OS level. EX2007 is a telecommunications handbook that post-dates the alleged
`
`filing date of the ’941 patent and that has a short discussion of “mobile agents.”
`
`EX2007, 2-11. That discussion merely refers to an agent as “a program,” but it
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`does not refer specifically to an OS-level program. Id. Similarly, EX2008 and
`
`EX2009 define “agent” as “[a] program that performs a background task for a
`
`user,” but do not limit the agent to being executed at the OS level. EX2008, 13;
`
`EX2009, 18. Finally, EX2010 is an excerpt from a webpage apparently published
`
`nearly a decade after the alleged priority date of the ’941 patent and that refers to
`
`an agent as “[a] software routine,” without specifying that the agent operates at the
`
`OS level. Id. Thus, this evidence does not support Dr. Martin’s construction of
`
`“agent.”
`
`11. Dr. Martin also relies on the ’941 patent’s file history to support his
`
`narrow construction. He suggests that I did “not consider the file history of the
`
`’941 patent” in arriving at my opinions. EX2018, ¶75. But this is incorrect. As I
`
`testified at my deposition, I considered “both the original prosecution history and
`
`the re-exam history” and concluded that they do not provide a basis to limit the
`
`meaning of the term “agent.” EX2026, 23:13-24:1. I still hold that opinion.
`
`12.
`
`In my view, the file history establishes that the applicant considered
`
`the crux of the alleged invention to be storing the license record in BIOS. In fact,
`
`the applicant emphasized that this feature distinguished the purported invention
`
`over the prior art. EX1002, 197-201. I see nowhere in the file history where the
`
`applicant characterized the agent as an important aspect of the claimed invention,
`
`nor where the applicant required the agent to be OS-level software. It seems to me
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`U.S. Patent No. 6,411,941
`that the applicant did not in fact believe that an OS-level agent was important, as
`
`the specification neither refers to “OS-level” implementation nor an “agent.”
`
`13. The term “agent” was added to the claims to overcome an enablement
`
`rejection under 35 U.S.C. § 112. As originally filed, the claims recited “selecting a
`
`program” residing in memory and “setting up a verification structure,” without
`
`distinguishing between the program being selected and the thing that was setting
`
`up the verification structure. Id., 14. The Examiner rejected the claims under § 112
`
`because the “Applicants do not teach the device necessary to edit an EEPROM nor
`
`have they made it clear to the Examiner how their system would be implemented
`
`in light of the non-trivial processing required to write and erase its data.” Id., 116-
`
`117. In response to the § 112 rejection, the applicant replaced the phrase “setting
`
`up a verification structure” with “using an agent to set up a verification structure,”
`
`thereby clarifying that something other than the selected program sets up the
`
`verification structure. Id., 137; see also id., 127 (summary of Examiner interview
`
`stating that “112 corrections” to the claims were discussed); id., 135 (applicant
`
`stating that the claims were amended “as agreed upon during the interview”). Thus,
`
`it appears that the applicant added “agent” to distinguish the software program to
`
`be verified with the software and/or hardware that sets up the verification structure.
`
`Neither the plain meaning of “agent,” nor the applicant’s or Examiner’s statements
`
`during prosecution limit the agent to OS-level software.
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`14. As I explained in my opening declaration, Hellman discloses an
`
`“agent” in the form of update unit 36, acting alone or with Hellman’s authorization
`
`and billing unit 13. EX1003, ¶¶137 (citing EX1004, 9:64-10:13, 10:33-49), 138
`
`(citing EX1004, 6:16-30). In particular, the update unit receives a hash value (H)
`
`corresponding to each software package a user is authorized to use and “sets up a
`
`structure of memory addresses” (i.e., a table) in the non-volatile memory
`
`containing the number of authorized uses (M) for each such hash value. Id., ¶¶135-
`
`136 (citing EX1004, 6:16-61, 9:64-10:13). Then, when a user’s request for an
`
`additional number of uses (N) of a particular software package is granted by
`
`authorization and billing unit 13, the update unit interrogates the memory structure
`
`and updates the value M in the particular memory address corresponding to the
`
`software package at issue to reflect that the user’s request has been verified. Id.,
`
`¶¶137B-138B (citing EX1004, 6:16-7:16, 9:64-10:13). In setting up a memory
`
`structure defined by hash values for the purpose of verifying the user’s access to
`
`software packages, Hellman’s update unit—again, acting alone or in conjunction
`
`with the authorization and billing unit—“sets up a verification structure,” as
`
`required by the ’941 patent claims.
`
`15. As I also explained in my opening declaration, Hellman’s update unit,
`
`as well as its authorization and billing unit, “would have been implemented by a
`
`software routine, potentially along with a hardware module.” Id., ¶137; see also
`
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`id., ¶¶137A-138B. As explained above, the claims do not exclude an agent acting
`
`in concert with hardware—nor could they since software necessarily runs on and
`
`interacts with hardware. Supra ¶¶6-7. Thus, the mere fact that Hellman’s update
`
`unit (and authorization and billing unit) could interact with hardware when
`
`carrying out the claimed verification setup step does not undermine my
`
`obviousness conclusion.
`
`B. Hellman Renders Obvious the Claimed Agent Under Dr. Martin’s
`Construction.
`16. Additionally, as I explain below, Hellman renders obvious the
`
`claimed agent under the criteria that Dr. Martin sets forth as defining OS-level
`
`software.
`
`1.
`
`A POSA Would Have Implemented Hellman in Software
`Form.
`17. As explained above, a POSA would have recognized that Hellman’s
`
`update unit 36—again, alone or conjunction with the authorization and billing unit
`
`16—“would have been implemented by a software routine, potentially along with
`
`a hardware module.” EX1003, ¶137 (emphasis added). As I noted in my opening
`
`declaration, implementing Hellman in software form would confer many benefits,
`
`including the ability to change the implementation logic over time, without having
`
`to physically disassemble, modify, and reassemble the units. Id., ¶¶137-138. I
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`reiterated these points throughout my declaration and during my deposition. Id.,
`
`¶¶137B, 138B; EX2026, 34:17-19, 35:9-18.
`
`18.
`
`I do not read Dr. Martin’s declaration as disputing any of this. Rather,
`
`Dr. Martin offers several arguments as to why, notwithstanding the aforementioned
`
`benefits, a POSA would not modify Hellman to be implemented in pure software
`
`form. But Dr. Martin appears to misread my opening declaration. In my view,
`
`Hellman would not need to be “modified” at all. Rather, Hellman’s disclosed
`
`verification process is in and of itself, and without modification, suitable for
`
`software implementation. Again, I emphasized that point repeatedly in my opening
`
`declaration. EX1003, ¶¶137 (“[A] POSA would have recognized that the update
`
`unit 36 would have been implemented by a software routine, potentially along with
`
`a hardware module.”), 137A (“[A] POSA would have understood that it was up to
`
`the discretion of the implementer whether to use software, hardware, or a
`
`combination of the two.”), 137B (noting that the functions performed by the update
`
`unit “were of a type that could be performed in software”); see also id., ¶¶138A-
`
`138B.
`
`19. Regardless, I disagree with each of Dr. Martin’s arguments as to why
`
`Hellman’s solution allegedly would not be implemented as software. First, Dr.
`
`Martin contends that Hellman’s disclosure of certain hardware elements such as
`
`“wires, switches, and glue” means that Hellman’s update unit and billing and
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`authorization unit are limited to hardware. EX2018, ¶¶164-166. I disagree. Every
`
`computer system has hardware, but that does not mean that all such systems lack
`
`software. Hellman’s base unit 12, which is a computer system that includes
`
`Hellman’s update unit 36, is no different. EX1004, Abstract, 1:8-16, 2:24-29,
`
`FIG. 8; EX1035, 145:5-20. The mere fact that Hellman’s computer uses “wires,
`
`switches, and glue”—as do most computers—does not preclude Hellman’s system
`
`from also using software to control or manage operations of the update unit (or
`
`authorization and billing unit). EX1035, 163:18-164:21 (Dr. Martin acknowledging
`
`that software could perform the EEPROM read and write functions described in
`
`Hellman).
`
`20.
`
`In support of his contentions, Dr. Martin seems to focus on Hellman’s
`
`disclosure of using its system in the context of the “record industry” and “record
`
`players.” EX2018, ¶¶170-171. According to Dr. Martin, Hellman’s reference to
`
`record players “would not bring to mind a pure software implementation.” Id.,
`
`¶171. As an initial matter, Dr. Martin’s suggestion that record players cannot be
`
`programmable and do not have software is incorrect. See EX1037, 1 (describing
`
`record player from the 1980s that I owned as having a microprocessor, which
`
`would have run software). In any event, Dr. Martin ignores other portions of
`
`Hellman’s disclosure—including in the very passage to which Dr. Martin cites—
`
`stating that Hellman’s system can be used to control software distribution in
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`“computers,” generally. See, e.g., EX1004, Abstract, 1:8-16, 2:24-29, FIG. 8;
`
`EX2018 ¶170 (Dr. Martin acknowledging that Hellman “describes the base unit as
`
`a ‘computer’”); EX1035, 145:5-20, 157:19-159:1 (Dr. Martin acknowledging at his
`
`deposition that Hellman’s system is not limited to record players). Computers
`
`indisputably bring to mind a software implementation.
`
`21. Second, Dr. Martin seems to suggest that there are no processors in
`
`Hellman’s system on which verifying software could run. EX2018, ¶164. I
`
`disagree. As I made clear during my deposition, Hellman’s base unit—like any
`
`computer system—contains at least one processor that could run software.
`
`EX2026, 34:12-35:6 (noting that Hellman’s components would be “running on a
`
`computer system, which most likely would include a microprocessor”); EX1035,
`
`145:5-20 (Dr. Martin acknowledging that Hellman’s base unit could be a
`
`computer, and that computers in 1998 had processors). For example, one such
`
`processor would be Hellman’s software player 42, which Hellman describes as “a
`
`microprocessor or central processing unit (CPU).” EX1004, 10:66-11:3; EX2026,
`
`34:6-11. Patent Owner argues that a software agent cannot run on Hellman’s
`
`software player 42 because such a configuration would be inoperative since the
`
`agent “could not run before the software player 42 is ‘activated.’” POR 60 (citing
`
`EX1004, 10:44-54)). I disagree. The processor within the software player 42 could
`
`be used to run an agent before the player is activated—i.e., before it plays the
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`software package subject to the license. In any event, as noted above and explained
`
`in my deposition, Hellman’s software need not run on the software player. Rather,
`
`a POSA would understand that it could run on any number of other processors in
`
`Hellman’s system. EX2026, 31:23-25, 34:12-35:6, 35:4-6.
`
`22. Third, Dr. Martin suggests that implementing Hellman in pure
`
`software form would lead to security risks that would offset the many benefits
`
`described above. In particular, Dr. Martin states that a software agent in Hellman’s
`
`system would need to “isolate and protect itself from the very software packages
`
`whose authorization is at issue.” EX2018, ¶174; see also id., ¶¶164, 175. I disagree
`
`that this risk is alone sufficient to dissuade a POSA from implementing Hellman in
`
`software form, particularly in view of the benefits described above and in my
`
`opening declaration. Supra ¶17.
`
`23. In any event, presumably the very same risk that Dr. Martin describes
`
`would also apply to a pure software agent in the ’941 patent’s system. And yet the
`
`’941 patent does not describe any way to guard against such risks. Accordingly, it
`
`seems that any standard mechanism for protecting the agent software could be
`
`used. And there were many such mechanisms known in the art at the time of the
`
`alleged invention. Indeed, implementing security mechanisms in software form
`
`was commonplace at the time of the alleged invention of the ’941 patent. See, e.g.,
`
`EX1040, 45, 55, 157, 182, and Chapter 19 (NIST’s Handbook on computer
`
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`security describing established mechanisms and “computer security programs” for
`
`combatting security threats). By 1998, there were numerous software-based
`
`mechanisms for ensuring that a particular piece of software was legitimate and not
`
`tampered with. One such mechanism was to use a digital signature or a digital
`
`security certificate to ensure that the software to be executed on a computer was
`
`identical to the original software provided by the software manufacturer. See, e.g.,
`
`EX1041 (Network Working Group’s RFC 2313, published in March 1998,
`
`describing RSA protocol for using encryption, digital signatures, and certificates to
`
`protect data). Numerous computer systems including those used for banking,
`
`cellular telephony, and military communications implemented secure software
`
`components. See, e.g., EX1042, 1:51-2:7, 3:1-36 (describing various “encryption
`
`techniques for enhancing software security” to protect against “viruses,” “worms,”
`
`and “[s]ecurity breaches”); EX1043, Abstract, 3:34-52 (describing encryption
`
`“protection mechanism for protecting software against copying”). In my view, a
`
`POSA would have known to use any of these mechanisms to guard against the risk
`
`that Dr. Martin identifies.
`
`24. Additionally, I note that Patent Owner mischaracterizes my testimony
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`to suggest that I opined as to what a POSA could do rather than what a POSA
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`would do based on Hellman’s disclosure. See, e.g., POR, 59-61. But I
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`unambiguously stated in my opening declaration that a POSA would have
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`recognized that the update unit 36 “would have been implemented by a software
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`routine ….” EX1003, ¶137 (emphasis added); see also id., ¶¶137A (“A POSA
`
`would have been motivated to implement the update unit 36 in software ….”), 138-
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`138B (similar testimony vis-à-vis authorization and billing unit 13).
`
`25.
`
`I also noted that Hellman “does not explicitly say” whether its update
`
`unit should be implemented as software. Id., ¶137A. That observation does not
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`indicate doubt as to the desirability of using Hellman’s software implementation—
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`rather, it confirms that Hellman itself does not teach away or dissuade a POSA
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`from implementing its system in software form. This is particularly true in view of
`
`the benefits described above and in my opening declaration. See supra ¶17.
`
`26. Finally, as I explained above and as Dr. Martin agrees, even if the
`
`claimed agent is limited to software, nothing in the claims precludes the software
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`from working with hardware to set up the claimed verification structure. Supra
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`¶¶6-8. And, indeed, Dr. Martin’s analysis seems to come down to a line-drawing
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`exercise. See EX1035, 122:12-123:10 (Dr. Martin acknowledging that the software
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`within a “mixed software/hardware entity” could comprise the claimed agent).
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`A POSA Would Have Implemented Hellman As OS-Level
`Software, Specifically.
`27. As explained above, Dr. Martin articulated varying criteria that he
`
`2.
`
`alleges defines OS-level software:
`
`•
`
`•
`
`•
`
`“relates to programs that are running that use the running operating
`system services, as part of their operation,” EX1035, 100:8-22;
`“can be thought of as running through the operating system,” id.,
`101:19-102:4;
`“rel[ies] on operating system services and is doing so after the
`operating system is running,” id., 102:5-9, 105:4-10;
`
`In my view, a POSA would also have implemented Hellman’s system as OS-level
`
`software, at least under one or more of the above criteria.
`
`28. As I explained above, a POSA would have understood that Hellman’s
`
`system uses a computer as the base unit (which includes the update unit). Supra
`
`¶19. And it was well understood at the time of the alleged invention that computers
`
`used operating systems. Indeed, I made clear during my deposition that “[a]
`
`general purpose desktop computer, like an ordinary PC, would usually have an
`
`operating system.” EX2026, 34:1-2; see also id., 31:21-32:23 (noting that Hellman
`
`“talks about a computer,” and that a POSA “would assume that a computer has an
`
`operating system”), 33:16-18 (“If you bought a computer, a desktop computer, for
`
`home use, that would almost always have an operating system.”).
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`I note that Dr. Martin himself acknowledges that operating systems—
`
`29.
`
`including, DOS, which was available in the early 1980s—were known at the time
`
`of the alleged invention of the ’941 patent:
`
`Examples of operating systems that were also known at the time of the
`invention included Windows NT, Windows 95, DOS, Macintosh OS,
`and UNIX-based operating systems. (Ex. 2014 [Misra] at 5:67–6:5; Ex.
`2019 [Ginter] at 81:35-36.) Each of these commercially available
`operating systems relies on a component that begins to run
`automatically when the computer is turned on to start the operating
`system (often referred to “booting” the computer).
`
`EX2018, ¶73; see also EX2026, 32:12-14; EX1035, 99:17-100:1, 109:9-17 (Dr.
`
`Martin “agree[ing] that operating systems generally were well known to people of
`
`ordinary skill in the art in 1998” and that, “in 1998, it was known that programs
`
`could run that would rely on operating system services”). Thus, Hellman’s system
`
`is already implementable as an OS-based system.
`
`30. Further, Hellman’s architecture strongly supports the notion that a
`
`POSA would in fact have implemented update unit 36 as OS-level software, at
`
`least under Dr. Martin’s interpretation of that term. As Figure 8 below shows,
`
`Hellman’s architecture includes a software package 17, which uses operating
`
`system resources.
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`BIOS
`
`BIOS (motivated by Chou)
`
`
`
`EX1004, FIG. 8 (annotated).
`
`In particular, the software is played using software player 42, which is part of base
`
`unit 12. The presence of software player 42 in base unit 12 suggests that the base
`
`unit is in fact running an operating system. EX1035, 98:4-99:7, 102:20-103:8,
`
`105:11-106:11 (Dr. Martin using similar rationale to justify the existence of OS-
`
`level software in the ’941 patent’s system).
`
`31. Update unit 36 is also part of base unit 12. Id., 144:1-6. The update
`
`unit provides access to non-volatile memory 37 (and the BIOS motivated by Chou
`
`therein). In particular, update unit 36 allows the system to verify and modify
`
`certain M values depending on whether the software package is licensed. See supra
`
`¶14. And, in order to perform that verification, the update unit must update M
`
`values by performing basic arithmetic, thereby using system resources (e.g., the
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`operating system’s arithmetic control unit, clock, processing power, etc.). Thus, in
`
`an OS-based system, because the update unit uses system resources to verify data
`
`in non-volatile memory for the purpose of making software available to a user, the
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`agent would be understood to be operating at the OS level under Dr. Martin’s
`
`criteria. Indeed, in that circumstance, not only would Hellman’s update unit “relate
`
`to” programs (software 17 and player 42) that use operating system services, the
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`update unit would itself use operating system services and run “through” the
`
`operating system. Thus, in that circumstance, Hellman’s update unit would satisfy
`
`Dr. Martin’s criteria for OS-level software.
`
`32. Dr. Martin’s own reliance on two passages of the ’941 patent in
`
`paragraph 128 of his declaration demonstrates that Hellman renders obvious an
`
`OS-level agent under Dr. Martin’s criteria. EX1035, 135:5-9, 137:16-138:17. The
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`first cited passage is column 1, line 65, to column 2, line 9. That passage explains
`
`that the alleged invention (in Patent Owner’s view, the purported “agent”) uses
`
`EEPROM manipulation commands to store, add, and modify items in non-volatile
`
`memory of the BIOS:
`
`The resulting encrypted license record is stored in another (second)
`non-volatile section of the BIOS, e.g. E2PROM (or the ROM). It should
`be noted that unlike the first non-volatile section, the data in the second
`non-volatile memory may optionally be erased or modified (using
`E2PROM manipulation commands), so as to enable to add, modify or
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`remove licenses. The actual format of the license may include a string
`of terms that correspond to a license registration entry (e.g. lookup table
`entry or entries) at a license registration bureau (which will be further
`described as part of the preferred embodiment of the present invention).
`
`EX1001, 1:65-2:9. Dr. Martin explained at his deposition that this passage “fore
`
`shadow[s]” [sic] an OS-level agent. EX1035, 138:7-17.
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`33. Hellman works precisely the same way. As I explained in my opening
`
`declaration, Hellman’s “update unit 36 retrieves a value stored at a location in
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`EEPROM, performs integer addition and/or subtraction, and transmits a value to be
`
`stored at a location in EEPROM.” EX1003, ¶137B (citing EX1004, 9:64-10:13);
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`EX1035, 148:6-22, 152:8-153:22, 156:7-157:1, 163:18-164:2 (Dr. Martin agreeing
`
`that Hellman’s update unit “reads and writes data to its non-volatile memory”).
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`Thus, to the extent the ’941 patent suggests an OS-level agent, so does Hellman.
`
`34. Dr. Martin’s second cited passage of the ’941 patent is column 6, lines
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`18-28, which likewise says that setting up the verification structure requires
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`accessing 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
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