Roku, Inc. and VIZIO, Inc.
`
`V.
`
`Ancora Techs. Inc.
`
`IPR2021-01406
`
`U.S. Patent No. 6,411,941
`
`ROoKU VIZIO
`
`Petitioner’s Demonstratives
`
`1
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`.
`
`-
`
`Not
`
`Evi
`
`Roku EX1055
`Roku v. Ancor
`IPR2021-01406
`
`Roku EX1055
`Roku v. Ancora
`IPR2021-01406
`
`

`

`Instituted Grounds
`
`
`
`1,2,11, 13
`
`103(a)
`
`Hellman, Chou
`
`1-3, 6-14, 16
`
`103(a)
`
`Hellman, Chou, Schneck
`
`DI, 6
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`2
`
`

`

`Disputed Issues
`
`= Claim Construction: Whether the term “agent” excludes hardware and requires an
`“OS-level software program or routine.” (POR, 32-36)
`
`= Alleged Missing Limitations: Whether the Hellman-Chou combination renders
`obvious the step of “using an agentto set up a verification structure in the
`erasable, non-volatile memory of the BIOS.” (POR, 56-63)
`
`= Motivation to Combine: Whether a skilled artisan would have been motivated to
`combine Hellman and Chou, as proposedin the petition. (POR, 52-56)
`
`= Dependent Claims: Whether Petitioner has shown the dependent encryption-
`related claims 3, 8, 9, and 14 to be obvious. (POR, 64-65)
`
`= Alleged Objective Indicia of Non-obviousness: Whether Patent Owner's
`settlement agreements and purported industry praise support its claim of non-
`obviousness. (POR, 66-70)
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`3
`
`

`

`The ’941 Patent
`
`«2 United States Patent
`Mulloret al.
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 6,411,941 B1
`Jun, 25, 2002
`
`(57)
`
`ABSTRACT
`
`A methodof restricting software operation within a license
`limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory
`area, and a volatile memory area. The method includesthe
`steps of selecting a program residing in the volatile memory,
`
`
`usetting a verification structure in the non-volatile
`memories, verifying the program using the structure, and
`acting on the program according to the verification.
`EX1001, Abstract
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`
`
`(54) METHOD OF RESTRICTING SOFTWARE
`OPERATION WITHIN A LICENSE
`LIMITATION
`
`(75)
`
`Inventors: Miki Mullor; Julian Valiko, both of
`Ramat Hasharon (IL)
`
`(73) Assignee: Beeble, Inc,, Newport Beach, CA (US)
`
`(*) Notice:
`
`Subject to any disclaimer, the term ofthis
`patent
`is extendedor adjusted under 35
`U.S.C, 154(b) by 0days.
`
`(21) Appl. No.: 09/164,777
`(22)
`Filed:
`Oct. 1, 1998
`
`Foreign Application Priority Data
`(30)
`May 21, 1998
`(IL)
`sssssssssssesesesnensneneeeeeseeeseseeseee 124571
`(SE)
`Ine CI ccstecensnesenenenennennne GO6E 17/60
`(52) US. Che cccccsssnsnesnessneene 705/59; 705/50; 705/51;
`705/53; 705/57
`cowen 705/51, 54, 56,
`(58) Field of Search...........
`705/57, 58, 59, 1, 50, 52, 53; 713/187,
`189, 200
`
`(56)
`
`References Cited
`U.S. PATENT DOCUMENTS
`
`9/1989 Karp
`4,866,769 A
`2/1990 Chandra ct al
`4,903,296 A
`5/1990 Hershey et al,
`4,924,378 A
`1/1995 Christiano
`5,386,369 A
`2/1995 Barber et al.
`5,390,297 A
`5,479,039 A * 12/1995 EWertZ Ob Ab. cece SISM430
`5,490,216 A *
`2/1996 Richadson, I woe S8O/4
`SO7L412 A
`9/1997 Christiano
`5,084,951 A * 11/1997 Goodman et al.
`5,754,763 A
`5/1998 Bereiter
`5,758,068 A
`5/1998 Brandi et al.
`5,758,069 A
`5/1998 Olsen
`5,790,664 A
`81998 Coleyet al
`§,826,011 A
`10/1998 Chouet al.
`§,892,000 A *
`4/1900 Ginter et al oo... 305/186
`5,905,860 A
`5/1999 Olsen et al
`
`..... 395/188,01
`
`6,000,030 A * 12/1999 Steinberg et al. wc... 713/200
`6,006,190 A
`12/1999 Baecna-Arnaiz et al.
`6,021,438 A
`2/2000 Duvvoori et al.
`6,023,763 A
`22000) Graumpstrup et al.
`6,052,600 A *
`4/2000 Fette et al.
`ccceeeeeeee 455/509
`6,055,503 A
`42000 Horstmann
`6,067,582 A *
`5/2000) Smith et abe coccccceeeeeen 710/5
`6,073,256 A
`6/2000 Sesma
`6,078,909 A
`6/2000 Kaulson
`6,128,741 A
`102000 Goetz et al.
`6,173.44Bl
`12001 Khan et al
`6,189,146 BI
`2/2001 Misia et ab. cnccccseeneee TE7/EL
`6,192,475 BI
`22001 Wallance
`6,198875 Bl
`3/2001 Edenson et ab. ccc 386/04
`6,226,747 Bi
`52001 Larsson et al,
`6,233,567 Bi
`5/2001 Cohen
`6,243,468 BI
`6/2001 Pearce et al.
`6,272,630 Bl
`8/2001 Neville et al.
`6,298,138 Bl
`10/2001 Gotoh et al.
`FOREIGN PATENT DOCUMENTS
`408286906 A * LI/1996
` eeneene GOGF/9/06
`
`*
`
`*
`
`pe
`
`OTHER PUBLICATIONS
`
`Dombusch et al., Destop management software: no need to
`adjust your set, Infoworld, v17, 037, poo."
`
`* cited by examiner
`
`Primary Examiner—Hyung-Sub Sough
`Assistant Examiner—Calvin L Hewitt
`(74) Attorney, Agent, or Firm—Venable; Robert Kinberg;
`Jeffri A. Kaminski
`
`(57)
`
`ABSTRACT
`
`A method of restricting software operation withina license
`limitation that is applicable for a computer having a first
`non-volatile memory area, a second non-volatile memory
`area, and a volatile memory area. The method includes the
`steps of selecting a program residing in the volatile memory,
`setting up a verification structure in the non-volatile
`memories, verifying the program using the structure, and
`acting on the program according to the verification.
`
`19 Claims, 2 Drawing Sheets
`
`

`

`941 Patent — Independent Claim 1
`
`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 stepsof:
`selecting a
`program residing in the volatile memory,
`in the
`
`erasable, non-volatile memory of the BIOS, the veri-
`fication structure accommodating data that includesat
`least one license record.
`verifying the program usingat least the verification struc-
`ture from the erasable non-volatile memory of the
`BIOS, and
`acting on the program according to the verification.
`
`EX1001, 6:59-7:4
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`

`

`The 941 Patent — Summary of Invention
`
`SUMMARYOFTHE INVENTION
`
`The present invention relates to a method ofrestricting
`software operation within a license limitation. This method
`strongly relies on the use of a key and of a record, which
`have been written into the non-volatile memory of a com-
`puter.
`
`Pet. 11; EX1001, 1:37-43
`
`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. This is implemented by encrypt-
`ing the license record (or portion thereof) using said key (or
`portion thereof) exclusively or in conjunction with other
`identification information) as an encryption key. The result-
`ing encrypted license record is stored in another (second)
`non-volatile section of the BIOS, e.g. E7PROM (or the
`
`60
`
`65
`
`2
`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 E7PROM manipu-
`lation commands), so as to enable to add, modify or remove
`licenses. The actual format of the license may include a
`string of terms that correspondto 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 embodimentof the present invention).
`EX1001, 1:59-2:9; Pet, 11-12; POR, 35
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`

`

`The 941 Patent - Structure
`
`EEPROM
`
`Voy %)
`
`L
`/
`
`LICENSE BUREAU
`
`(7)
`
`
`1st + 2"4 = BIOS Memo The second non-volatile memory includes a license-
`
`DETAILED DESCRIPTION OF A PREFERRED
`EMBODIMENT
`
`A schematic diagram of a computer and a license bureau
`is shown in FIG. 1. Thus, a computer processor (1) is 10
`associated with input operations (2) and with output opera-
`tions (3). This computer (processor) internally contains a
`first non-volatile memory area (4) (e.g. the ROM section of
`the BIOS), a second non-volatile memoryarea (5) (e.g. the
`E*PROMsection of the BIOS), and a volatile memory area 15
`(6) (e.g. the internal RAM memory of the computer).
`
`record-area (9) e.g. which contains at least one encrypted
`license-record (e.g.
`three records 10-12). The volatile
`memory accommodates a license program (16) having
`license record fields (13-15) appended thereto. By way of
`example said fields stand for Application names(e.g. Lotus
`123), Vendor name (Lotus inc.), and numberof licensed
`copies (1 for stand alone usage, >1 for number of licensed
`users for a network application).
`
`°
`
`wSo
`
`Pet. 13; EX1001, 5:9-34
`
`Pet. 14; EX1007, FIG. 1
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`T
`
`

`

`The *941 Patent - Method
`
`
`
` Verifying
`
`
`
`Software
`
`VERIFYING
`
`20
`
`tJwi
`
`ACTING
`
`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.
`Establishing a license-record includes the steps of: form-
`ing a license-record by encrypting of the contents used to
`form a license-record with other predetermined data
`contents, using the key; and establishing the encrypted
`license-record in one of the at least one established license-
`record locations (e.g. 10-12 in FIG. 1).
`
`SELECTING
`
`18
`
`SETTING UP
`
`Using an “agent”
`
`65
`
`using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the veri-
`fication structure accommodating data that includesat
`least one license record,
`
`EX1001, Claim 1
`
`
`
`Pet. 15; EX1001, FIG. 2
`
`Pet. 15; EX1001, 6:17-27
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`8
`
`

`

`CLAIM CONSTRUCTION
`
`Not Evidence
`
`

`

`Claim Construction
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`thereof Reply 1-7
`
`“agent” excludes hardware and requires|“agent” should be givenits plain and
`an “OS-level software program or
`ordinary meaning, which can be
`routine”
`software, hardware, or a combination
`POR 32-36
`
`¢ The Board preliminarily (and correctly) rejected Patent Owner’s narrow construction in
`the institution decision. pi 10, 23.
`
`¢ The Board should (again) reject Patent Owner’s attempt to rewrite a claim term that
`appears nowherein the 941 patent specification. Patent Owner has not metthe high
`burden to show prosecution history disclaimer.
`
`Petitioner's Demonstrative Exhibit
`jot Evidence
`
`10
`
`

`

`"941 Patent Claims
`
`« “It is a bedrock principle of patent law that the claims of a patent
`define the invention to which the patenteeis entitled the right to
`exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`2005) (cleaned up).
`
`= The claims themselves put no limitations on the term “agent.”
`
`= Structurally, claim 1’s “agent” is only usedin the “setting up”
`step.
`
`

`

`
`
`941 Patent — Independent Claim 1
`
`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 stepsof:
`selecting a
`program residing in the volatile memory,
`in the
`
`erasable, non-volatile memory of the BIOS, the veri-
`fication structure accommodating data that includesat
`least one license record.
`verifying the program usingat least the verification struc-
`ture from the erasable non-volatile memory of the
`BIOS, and
`acting on the program according to the verification.
`
`EX1001, 6:59-7:4
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`

`

`"941 Patent Specification
`
`“The specification is always highly relevant to the claim construction analysis.
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed
`term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (cleaned up).
`
`The 941 patent specification does not use the term “agent.” It was addedto the
`claims during prosecution. Reply, 2.
`
`The specification also does not use the term “operating system” or “OS-level
`software.” Reply,2.
`
`The only evidence Patent Ownerrelies on in the 941 patent specification is
`disclosure of EZPROM manipulation commands, (POR, 35; Sur-Reply,10), which
`purportedly describes OS-levelactivity.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`13
`
`

`

`941 Patent Specification
`
`Now, there commences an initial license establishment
`procedure, where a verification structure is set in the BIOS 60
`so as to indicate that the specified program is licensed to run
`on the specified computer. This is implemented by encrypt-
`ing the license record (or portion thereof) using said key (or
`portion thereof) exclusively or in conjunction with other
`identification information) as an encryption key. The result- 65
`ing encrypted license record is stored in another (second)
`non-volatile section of the BIOS, e.g. E7PROM (or the
`
`2
`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 E7*PROM_manipu-
`lation commands), so as to enable to add, modify or remove
`‘licenses. The actual format of the license may include a
`string of terms that correspondto 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 embodimentof the present invention).
`
`5
`
`POR, 35; EX1001, 1:59-2:9
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`14
`
`

`

`‘941 Prosecution History
`
`= Patent Ownerrelies primarily on a theory of prosecution history disclaimer. sur
`Reply at 6.
`
`¢ Prosecution history disclaimers require, in the Federal Circuit's words, “clear and
`unequivocal evidence that the claimed invention includes or does not include a
`particular feature.” Poly-America, L.P. v. API Industries, Inc., 839 F.3d 1131, 1136 (Fed.
`Cir. 2016) (citations omitted).
`
`¢ “Ambiguous language cannot support disavowal.” /d.
`
`= Nowherein its briefing does Patent Owneractually acknowledge the high
`bar the Federal Circuit has set for prosecution history disclaimer.
`
`=
`
`Its arguments fall well short of that high bar since the fairest reading of the
`prosecution history puts no limits on the term “agent.”
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`15
`
`

`

`Prosecution History — Chron.
`
`= Examiner rejects claim 1 under Sec. 112 for failure to recite
`a separate entity that performsthe setting up step.(Reply,3)
`
`5.
`
`Claim 1 is rejected under 35 U.S.C. 112,first paragraph, as based on a disclosure
`
`
`
`
`
`which is not enabling.‘AdevicetowritetoanEEPROMandamethodtakinginto
`
`
`
`accountsaiddevicearecriticaloressentialtothepracticeoftheinvention,butnot
`
`“ineludedintheclaim(s)isnotenabledbythedisclosure)See In re Mayhew, 527
`
`
`
`
`
`
`
`
`
`
`
`F.2d 1229, 188 USPQ 356 (CCPA 1976).TheApplicantsdonotteachthedevice
`
`
`
`eraseitsdata.
`
`EX1002, 117
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`

`

`Prosecution History — Chron.
`
`= Claim amendedin responseto a 112 rejection (Reply, 3-4; EX1002, 137)
`
`A method ofrestricting software operation within a license
`(Twice Amended)
`J 1.
`
`for use with a computer including an firstnen-erasable-—non-volatiiememory—areaasecond,
`
`Applicant’s representative appreciates the Examiner’s courtesy in conducting a personnel
`interview in this case. The claims have been amendedas agreed upon during the interview andit
`
`nen-crasable, non-volatile memory area of a (BIOS) of the computer, and a volatile memory
`
`is respectfully submitted that this application is now in condition for allowance.
`
`area;
`
`the
`
`
`Specifically, claim 1 has been amendedtorecite that the verification structure is stored in
`
`comprising the stepsof:
`
`an_erasable, non-volatile memory area of the BIOS. This claim amendment overcomes the
`
`selecting a program residing in the volatile memory,
`
`rejections under 35 U.S.C. 112,first paragraph in sections 3, 4 and 5 ofthe Final Office Action,
`
`using an agent to setting up verification structure in the secend-erasable, non-volatile
`
`
`as well as the rejection under 35 U.S.C. 112, second paragraph in section 7 of the Final Office
`
`
`memory of the BIOS,
`
`the verfieation-verification structure accommodatinges data that includes
`
`Action.
`
`at least one license record,
`
`verifying the program using at least said-theverification structure from the erasable non-
`
`volatile memory of the BIOS, and
`
`acting on the program according to the verification.
`
`= Amendment adds “agent” as the entity responsible for setting up the verification structure—i.e., writing
`to the EEPROM.(Reply, 4; EX1002, 135)
`
`= Applicant introduces “a description of a specific embodimentof the invention”in the form of the Beeble
`White paper. (EX1002, 136)
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`17
`
`

`

`
`
`DELIBERATELY BLANK
`
`

`

`Prosecution History — Chron.
`
`= Post amendment, claims rejected over Misra, Goldman, and Ewertz.
`EX1002, 187.
`
`Furthermore, there is no suggestion or motivation to combine Misra and Ewertz in the
`
`mamnersuggested inthe OfficeAction.BIOS is aconfigurationutility. Software license
`oH Applicant Responds:
`management applications, such as the one ofthe present invention, are operating system (OS)
`Claims 1-23 have been rejected under 35 U.S.C. 103(a) as being unpatentable over Mista Laan
`level programs. Therefore, BIOS programs and software licensing management applications do
`et al. in view of U.S. Patent No. 5,684,951 to Goldman et al. and U.S. Patent No. 5,479,639 —
`notordinarily interact or communicate because when BIOSis running,the computeris in a
`configuration mode, hence OSis not running. Thus, BIOS an
`The cited references do not render the present invention obvious as they do not teach or
`ve
`are nommall
`
`
`
`among other things, storing a verification structure, such as a software licensesuggest,aoutuallyexclusive.Fasteres—2S—_.SSS—SnncTegm
`information, intheBIOS ofacomputeras is recitedinthepresent claims.
`EXx1002. 197
`Ewertzteaches thatwritingto the BIOSareais performed bythe BIOS routines:
`“Referring to Fig. 8, processing logic for updating the flash memory
`device with configuration data,
`such as EJSA information,
`is
`illustrated... The processing logic shown in Fig. 8 resides in the system
`
`i
`
`i
`
`ing.
`
`;
`
`d OSlevel
`
`Ewertz et al.
`
`Additionally, Misra teaches away from using the BIOSas a storage area by making a
`
`;
`
`.
`
`statement about client computers that do not have a persistent non-volatile area.
`
`Misra teaches a licensing system that is OS level based:
`
`“The license cache 136 is kept in persisted (non-volatile) storage. Clients
`that do not have persistent storage can be issued licenses as long as they
`can generate a unique client ID and can respond to the client platform
`challenge protocol”(Misra, Col. 12, lines 15-18)
`
`Since all computers must have a BIOS,it is clear Misra teaches away from using the
`BIOSas a local storage area for licenses.
`EX1002, 201
`
`“The license generator 26, license server 28 and intermediate server 32
`are preferably implemented as computer servers, such as Windows NT
`servers that nm Windows NT server operating systems from Microsoft
`corporation, or UNIX-based servers” Col 5,lines 3-7
`Thus, the systems described in Misra and Ewertz are an OS program and a BIOS
`.
`.
`.
`.
`program, respectively, that cannot run at the same time. Therefore, there is no teaching or Ex1002. 199
`oo
`.
`suggestion to combine these programs. In fact such a combination would change the operation
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`19
`
`

`

`Prosecution History — Chron.
`
`Moreover, the present invention proceeds against conventional wisdom in the art. Using
`
`a Focus on setting up the
`verification structure in BIOS
`
`_¢8
`
`.
`
`-
`
`2 NO mention of “agent”
`
`= No restrictions on “agent”
`
`ceeeeeeeeeeneerevcmsem
`
`obvious.
`
`The
`
`area is not consi
`
`a storage area for computer applications. An
`
`ary
`
`skilled artisan would not consider the BIOS as a storage medium to preserve application data for
`
`at least two reasons.
`
`First,OS doesnotsupportthisfunctionalityandisnotrecognizedasahardware 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 OSfeatures 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 BIOSas a possible storage medium. Furthermore, it is common
`
`that all peripheral devices in the PC are listed aud 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 PCis associated with an OSfile systern 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.
`Pet. 16-17; Reply, 4; EX1002, 200.
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`20
`
`

`

`Prosecution History — Chron.
`
`= Examiner allows claims:
`
`licensing numbers. Hence, it appearsinitially, that to one of ordinary skill of the
`
`“TRIemarks in the examiner’s
`statement of reasonsfor allowance”
`are “insufficient to limit claim scope.”
`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732, 737 (Fed. Cir. 2014)
`(cleaned up).
`
`art, the combination of Ewertz et al. with either Ginter et al. and/or Misraetal.,
`
`would renderthe present invention obvious. However, the key distinction
`
`betweenthe present invention and the closestprior art, is that the Misra et al.,
`and Ginter et al. systems and the Ewertz et al. system run at the operating
`
`system level and BIOSlevel, respectively. More specifically, the closest prior art
`
`systems, singly or collectively, do not teach licensed programs running at the OS
`level interacting with a program verification structure stored in the BIOSto verify
`
`the program usingthe verification structure and having a user act on the program
`
`according to the verification. Further, it is well known to those of ordinary skill of
`
`the art that a computer BIOSis not setup to managea software license
`
`verification structure. The present invention overcomesthis difficulty by using an
`
`agent to set up a verification structure in the erasable, non-volatile memory of the
`
`BIOS.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`Reply, 6-7; EX1002, 213
`
`21
`
`

`

`Key Takeaways
`
`= Applicant/Patent Ownerall along emphasized that the crux of the claimed invention
`wasstoring a license record in BIOS. Pet. 16-17; Reply 4-5; EX1002, 197-201; EX1033, 12.
`
`— POPR:“[s]toring the verification structure in BIOS memory wasa ‘keydistinction” over the art, and that the BIOS limitation “was
`significant to the 941 Patent’s innovation.” Reply, 4; POPR, 35-36.
`
`— Inventor: Setting up verification structure in BIOS was“the key highlight of this technology.” Reply, 4-5; EX1034, 74:4-75:16.
`
`— Courts: “In sum, the prosecution history demonstrates that the focus of the claimsis that the verification structure is in the erasable
`portion of the non-volatile memory and usesthekeyin the separate non-erasable portion.” Reply, 5; EX1020, 18.
`
`= “Agent” was added to overcome a § 112 rejection and to recite a separate entity for
`performing the claimed setting up step. Reply 3-4; £x1002, 116-17, 135, 137; EX1033, 13.
`
`= Applicant never mentioned the significance of the agentatall, let alone
`distinguished prior art on the basis that it lacks an agent. Reply 4-6.
`
`= Examiner’s use of “agent” does not restrict the term — it is whateveris used to
`interface with non-volatile memory to set up a verification structure.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`22
`
`

`

`ALLEGED MISSING LIMITATIONS
`
`Not Evidence
`
`

`

`“using an agentto set up a verification structure”
`
`= “Agent”
`
`¢ Patent Owner’s alleged missing-limitation argument rises andfalls with its too narrow
`construction of “agent” as excluding hardware only and hardware-software implementations.
`
`¢ With no alternative arguments, there is no dispute that Hellman discloses an “agent” under
`the plain and ordinary meaning of that term, which allows hardware and hardware-software
`implementations.
`
`° In any event, the prior art combinations render obvious a software-only agent.
`
`= “Verification Structure’
`
`¢ Hellman’s memory structure(i.e., table) of M values defined by H valuesis the claimed
`“verification structure.”
`
`¢ Patent Owner’s contrary arguments are based on an implicit construction that a
`verification structure must be some (unspecified) specific type of structure.
`
`Petitioner's Demonstrative Exhibit
`Not Evidence
`
`24
`
`

`

`Prior Art — Hellman
`
`However, there is no copy protection, so that one
`25 dishonest customer can make as may copies as he wants
`of the
`i
`i
`acquaint-
`
`ances
`These ac-
`quaintances can in turn giveorsell generation copies to
`their acquaintances, etc.
`EX1004, 2:24-29; Pet. 22; Reply, 10.
`
`
`
`AUTHORIZATION
`BILLING
`UNIT
`
`The user at base unit 12 obtains software package 17
`by purchasing it at a store, over telephoneline, or in
`some similar manner. The cost for software package 17
`can be set low because additional revenue will be ob-
`tained by the software manufacturer when issuing addi- 55
`tional authorizations for use of the software package.
`
`EX1004, 5:51-56; Pet. 23.
`
`F.1G— /
`
`EX1004, FIG. 1: Pet. 23.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`25
`
`

`

`Prior Art — Hellman
`SOFTWARE
`
`software being used. Update unit 36 applies to interrog-
`atory signal representing H to a non-volatile memory
`37, for example an EEPROM or a CMOS memory with
`battery backup. The non-volatile memory 37 applies a
`signal to the update unit 36, said signal representing M,
`the number of authorized uses of the software package
`with hash value H whichstill remain unused prior to
`this new authorization. The update unit 36 adds M and
`N and applies a signal representing M-+N to the non-
`volatile memory 37, so that M+N replaces the old
`numberM in the non-volatile memory 37 as the number
`of uses of the software package which have been paid
`for.
`|
`
`
` CRYPTO
`
`CHECK
`UNIT
`
`Pet. 25; EX1004, 10:1-13.
`
`package is being used. Update unit 36 uses H as an
`address to non-volatile memory 37, which responds
`with a signal representing M, the number of uses of
`software package 17 whicharestill available.
`P AUTHORIZATION|&%1904, FIGs. 1, 6
`
`Pet. 26; EX1004, 10:40-43
`BILLING
`(excerpted)
`Petitioner's Demonstrative Exhibit
`UNIT
`
`jot Evidence
`
`26
`
`

`

`Prior Art — Hellman
`
`
`|ONEwaeWAYswitch|ONEwae
`paver
`fe—|
`
`42
`
`FIG. 8 depicts an implemenation of the base unit 12
`during use of a software package. Software package 17
`35 is connected to the base unit 12 and a signal representing
`said software package is operated on by the one-way
`hash function generator 33 to produce an outputsignal
`which represents the hash value H. The signal H is
`transmitted to update unit 36 to indicate which software
`40 package is being used. Update unit 36 uses H as an
`address to non-volatile memory 37, which responds
`with a signal representing M, the number of uses of
`software package 17 whicharestill available.
`Pet. 26; EX1004, 10:40-43
`
`Software player 42 will vary from application to
`application. For example, if the software is recorded
`music then software player 42 would be a record player;
`
`SOFTWARE
`
`
`
`
`NON
`
`VOLITILE
`
`
`UNIT
`
`MEMORY
`
`
`UPDATE
`
`
`
`EX1004, FIG. 8 Pet. 33-34, 37; EX1003, 99;
`
`FIG_8&
`
`EX1004, 10:66-11:3
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`27
`
`

`

`Hellman Renders Obvious a Software “Agent”
`
`= “(U]pdate unit would have been implemented by a software
`routine, potentially along with a hardware module.”Pet. 39; Ex1003,
`4/137; Reply, 9.
`
`= Hellman’s disclosed verification process is, without modification,
`suitable for software implementation. £x1003, 991137-137B; EX1033, 18;
`Reply, 9.
`
`= A software implementation would allow the provider of the base
`unit and authorization andbilling unit “to change the
`implementation logic” of the units over time, “without having to
`physically disassemble, modify, and reassemble” them. Pet. 39;
`Reply 9; EX1003, JJ§[| 137B, 138B; EX2026, 34:17-19, 35:9-18; EX1033, J§| 17-18; DI, 23-24.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`28
`
`

`

`Hellman Renders Obvious a Software “Agent”
`
`= Claims do not preclude hardware from working with software to
`set up the claimed verification structure. Reply 10; Ex1033, | 26; EX1035,
`122:12-123:10, 129:9-130:22, 131:14-19.
`= Both experts agree:
`Dr. Martin: Q. Can other components or software be
`used along with the agentto set up the verification
`structure?
`MR. GOSSE: Object to the form.
`THE WITNESS: The way| read this limitation in Claim 1
`of using an agentto set up a verification structure, it
`requires the use of the agentto set up theverification
`structure as described in the limitations. But 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.
`EX1035, 129:9-130:22, see also 122:12-123:10, 131:14-19.
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`Dr. Wolfe: “[E]ven if the claimed
`agentis limited to software,
`nothing in the claims precludes
`the software from working with
`hardwareto set up the claimed
`verification structure.”
`EX1033, 926.
`
`

`

`Hellman Renders Obvious a Software “Agent”
`
`= Dr. Wolfe testified that a POSA would have known howto address any security risks that a
`software-implementation might create. Reply 11; EX1033, J{] 22-23. Patent Ownerdid not depose
`Dr. Wolfe and this technical point is unrebutted.
`
`¢ “(W]e do not ignore the modifications that one skilled in the art would maketo a device borrowedfrom theprior
`art.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
`
`= That Hellman’s alleged hardware implementation may also be effective does not negate Dr.
`Wolfe’s rationale for using a software implementation. Reply 11.
`
`¢ “The normaldesire of artisans to improve upon whatis already generally known can provide the motivation to
`optimize variables such as the percentage of a Known polymerfor use in a knowndevice.” /n re Ethicon, Inc.,
`844 F.3d 1344, 1351 (Fed. Cir. 2017).
`
`= Dr. Wolfe unambiguously opined as to what a POSA “would do,” not what she “could do.”
`Reply 11-12; EX1003, J] 137, 137A, 138-138B; EX2026, 34:17-19; EX1033, J] 24-25.
`
`
`137A. A POSAwouldhavehaverecognized that the update unit 36 would
`
`been implemented by software, hardware, or some combination of the two.
`
`
`Petitioner's Demonstrative Exhibit
`EX1003, 1 137A
`Not Evidence
`
`30
`
`

`

`Hellman Renders Obvious an OS-Level Software “Agent” Under Patent Owner’s Construction
`
`= Dr. Martin's criteria for determining whether a program operatesat
`the OS level (Reply, 13):
`
`¢ OS-level software “relates to programsthat are running that use the running
`operating system services, as part of their operation.” £x1035, 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.
`
`¢ “[T]here is, in that sense, a momentof transition when the operating system
`first starts running, its services become available, and then an application
`could rely on those services. Whenthey do so, they’re relying on the OS
`level services, not the BIOS configuration utility ... .” Id. 103:9-104:2.
`
`Petitioners Demonstrative Exhibit
`Not Evidence
`
`31
`
`

`

`Under Patent Owner’s Construction
`
`Hellman Renders Obvious an OS-Level Software “Agent”
`
`= Hellman’s base unit is a computer and computersin the early 1980s and throughout the
`1990s used operating systems.Reply 12-13; EX2026, 31:21-23; 34:1-2; EX1033, Jf] 28-29; EX2018, | 73; EX1035,
`99:17-100:1, 109:9-17.
`Dr. Wolfe
`Dr. Martin
`
`28. AsTexplained above, a POSA would have understood that Hellman’s
`
`Q.
`
`You would agree that operating systems
`
`system uses a computeras the base unit (which includes the update unit). Supra
`
`were well known as of 1998, right?
`
`A.
`
`Yes,
`
`I do.
`
`19. And it was well understood at the time of the alleged invention that computers
`
`MR. GOSSE: Object to form.
`
`used operating systems. Indeed, I made clear during my depositionthat “[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
`
`THE WITNESS:
`
`I do agree that operating
`
`systems generally were well known to people of
`
`ordinary skill in the art in 1998.
`
`*
`
`*
`
`*
`
`Q.
`
`Dr. Martin, would you agree that OS level
`
`program