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
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,411,941
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 4
`III. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 7
` Grounds for Standing ............................................................................ 7
`Overview of Challenge and Relief Requested ...................................... 7
`
`1.
`Identification of Prior Art ........................................................... 7
`2.
`Grounds for Challenge ................................................................ 8
`3.
`Statutory Grounds of Challenge and Legal Principles ............... 8
`IV. DESCRIPTION OF TECHNOLOGY ............................................................. 9
` Overview of the Technology ................................................................. 9
`Overview of the ’941 Patent ................................................................10
`
`1.
`The Specification and Alleged Invention .................................11
`2.
`Prosecution History and Later Proceedings ..............................16
`3.
`The Challenged Claims .............................................................19
`CLAIM CONSTRUCTION ..........................................................................20
`V.
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................21
`VII. SPECIFIC GROUNDS FOR PETITION ......................................................22
` Ground I: Claims 1-2, 11, and 13 were obvious over the combined
`teachings of Hellman and Chou. .........................................................22
`1.
`Overview of Hellman ................................................................22
`2.
`Overview of Chou .....................................................................27
`3. Motivations to Combine Hellman and Chou ............................28
`4.
`Claim 1 preamble: “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:” ...33
`Claim 1.a: “selecting a program residing in the volatile
`memory,” ...................................................................................36
`Claim 1.b: “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
`
`6.
`
`5.
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`7.
`
`8.
`
`9.
`
`
`
`record,” ......................................................................................38
`Claim 1.c: “verifying the program using at least the verification
`structure from the erasable non-volatile memory of the BIOS,
`and” ...........................................................................................39
`Claim 1.d: “acting on the program according to the
`verification.” .............................................................................40
`Claim 2: “A method according to claim 1, further comprising
`the steps of: establishing a license authentication bureau.” ......40
`10. Claim 11: “A method according to claim 1 wherein the volatile
`memory is a RAM.” ..................................................................41
`11. Claim 13: “The method of claim 1, wherein a unique key is
`stored in a first non-volatile memory area of the computer.” ...41
`Ground II: Claims 1-3, 6-14, and 16 were obvious over the combined
`teachings of Hellman, Chou, and Schneck..........................................42
`1.
`Overview of Schneck ................................................................42
`2. Motivations to Combine Hellman, Chou, and Schneck ...........43
`3.
`Claim 1. preamble: “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:” ...46
`Claim 1.a: “selecting a program residing in the volatile
`memory,” ...................................................................................47
`Claim 1.b: “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,” ......................................................................................48
`Claim 1.c: “verifying the program using at least the verification
`structure from the erasable non-volatile memory of the BIOS,
`and” ...........................................................................................50
`Claim 1.d: “acting on the program according to the
`verification.” .............................................................................51
`Claim 2: “A method according to claim 1, further comprising
`the steps of: establishing a license authentication bureau.” ......51
`Claim 3 preamble: “A method according to claim 2, wherein
`setting up a verification structure further comprising the steps
`
`9.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`of:” .............................................................................................51
`10. Claim 3.a: “establishing, between the computer and the bureau,
`a two-way data-communications linkage;” ...............................51
`11. Claim 3.b: “transferring, from the computer to the bureau, a
`request-for-license including an identification of the computer
`and the license-record’s contents from the selected program;” 52
`12. Claim 3.c: “forming an encrypted license-record at the bureau
`by encrypting parts of the request-for-license using part of the
`identification as an encryption key;” ........................................55
`13. Claim 3.d: “transferring, from the bureau to the computer, the
`encrypted license-record; and” .................................................55
`14. Claim 3.e: “storing the encrypted license record in the erasable
`non-volatile memory area of the BIOS.” ..................................56
`15. Claim 6: “A method according to claim 1 wherein selecting a
`program includes the steps of: establishing a licensed-software-
`program in the volatile memory of the computer wherein said
`licensed-software-program includes contents used to form the
`license-record.” .........................................................................56
`16. Claim 7 preamble: “A method according to claim 6 wherein
`using an agent to set up the verification structure includes the
`steps of:” ...................................................................................56
`17. Claim 7.a: “establishing or certifying the existence of a pseudo-
`unique key in a first non-volatile memory area of the computer;
`and” ...........................................................................................57
`18. Claim 7.b: “establishing at least one license-record location in
`the first nonvolatile memory area or in the erasable, non-
`volatile memory area of the BIOS.” .........................................57
`19. Claim 8 preamble: “A method according to claim 6 wherein
`establishing a license-record includes the steps of:” ................58
`20. Claim 8.a: “forming a license-record by encrypting of the
`contents used to form a license-record with other predetermined
`data contents, using the key; and” ............................................58
`21. Claim 8.b: “establishing the encrypted license-record in one of
`the at least one established license-record locations.” ..............58
`22. Claim 9 preamble: “A method according to claim 7 wherein
`verifying the program includes the steps of:” ...........................59
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`23. Claim 9.a: “encrypting the licensed-software-program's license-
`record contents from the volatile memory area or decrypting the
`license-record in the erasable, non-volatile memory area of the
`BIOS, using the pseudo-unique key; and” ................................59
`24. Claim 9.b: “comparing the encrypted licenses-software-
`program’s license-record contents with the encrypted license-
`record in the erasable, non-volatile memory area of the BIOS,
`or comparing the license-software-program's license-record
`contents with the decrypted license-record in erasable non-
`volatile memory area of the BIOS.” .........................................60
`25. Claim 10: “A method according to claim 9 wherein acting on
`the program includes the step: restricting the program's
`operation with predetermined limitations if the comparing
`yields non-unity or insufficiency.” ...........................................61
`26. Claim 11: “A method according to claim 1 wherein the volatile
`memory is a RAM.” ..................................................................61
`27. Claim 12: “The method of claim 1, wherein a pseudo-unique
`key is stored in the non-volatile memory of the BIOS.” ..........62
`28. Claim 13: “The method of claim 1, wherein a unique key is
`stored in a first non-volatile memory area of the computer.” ...63
`29. Claim 14: “The method according claim 13, wherein the step of
`using the agent to set up the verification record, including the
`license record, includes encrypting a license record data in the
`program using at least the unique key.” ....................................63
`30. Claim 16: “The method according to claim 13, wherein the step
`of verifying the program includes a decrypting the license
`record data accommodated in the erasable second non-volatile
`memory area of the BIOS using at least the unique key.” ........63
`VIII. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION UNDER
`§§ 325(d) and 314(a) TO DENY REVIEW. .................................................64
`The substance of this Petition does not warrant denial under § 325 (d).
`
` .............................................................................................................64
`The substance of this Petition also does not warrant denial under
`§ 314(a) ................................................................................................65
`The General Plastic factors favor institution. .....................................65
`The Fintiv factors favor institution. ....................................................68
`
`1.
`2.
`
`
`
`- iv -
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`IX. CONCLUSION ..............................................................................................70
`
`
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`- v -
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`PETITIONER’S EXHIBIT LIST
`
`Exhibit
`Description
`No.
`1001 U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`Image File Wrapper of U.S. Patent No. 6,411,941 (“’941 Patent File
`1002
`History”)
`1003 Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`1004 U.S. Patent No. 4,658,093 (“Hellman”)
`1005 U.S. Patent No. 5,892,906 (“Chou”)
`1006 U.S. Patent No. 5,933,498 (“Schneck”)
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US), Inc.,
`1007
`No. 8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No. 34)
`In re: Coronavirus Public Emergency, Order Concerning Phased
`Reopening of the Court, General Order No. 20-09, United
`States District Court for the Central District of California, Aug.
`6, 2020
`1009 Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns AB,
`No. 1:19-cv-01703 (D. Del.)
`1010 Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No. 1:19-
`cv-01712 (D. Del.)
`1011 Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No.
`4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107)
`Final Claim Constructions of the Court, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020) (ECF
`No. 69)
`Supplemental Claim Construction Order, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020) (ECF
`No. 93)
`Joint Claim Construction and Prehearing Statement, Ancora Techs.,
`Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192 (C.D. Cal. July 17,
`2020) (ECF No. 49)
`European Patent Application No. EP 0766165A2 (“’165
`1015
`Application”)
`1016 U.S. Patent No. 5,724,425 (“’425 Patent”)
`1017 U.S. Patent No. 6,138,236 (“’236 Patent”)
`1018 U.S. Patent No. 5,802,592 (“’592 Patent”)
`1019 U.S. Patent No. 5,835,594 (“’594 Patent”)
`
`1008
`
`1012
`
`1013
`
`1014
`
`- vi -
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`Exhibit
`No.
`1020
`
`Description
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT Mobile
`(US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15, 2020) (ECF
`No. 60)
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT Mobile
`1021
`(US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15, 2020) (ECF
`No. 69)
`1022 Complaint, Ancora Techs., Inc. v. TCL Corp., et al., No. 4:19-cv-
`00624 (E.D. Tex. Aug. 27, 2019) (ECF No. 1)
`1023 U.S. Patent No. 5,734,819 (“Lewis”)
`File Wrapper of Ex Parte Reexamination of U.S. Patent No.
`1024
`6,411,941, Control No. 90/010,560 (“’560 Reexam File Wrapper”)
`
`
`
`- vii -
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`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`Petitioners request inter partes review of U.S. Patent No. 6,411,941
`
`(EX1001).
`
`I.
`
`INTRODUCTION
`The ’941 Patent generally relates to methods for restricting unauthorized
`
`software operation. Specifically, the claimed method stores a license record in a
`
`BIOS memory, which purportedly overcame deficiencies using a software-based
`
`prior art method where a license record was stored in “volatile memory (e.g., hard
`
`disk)” and a hardware-based prior art method. EX1001, ’941 Patent, 1:10-42.
`
`Indeed, storing a license record for a program in the BIOS memory, and not just
`
`any non-volatile memory, is the supposed improvement of the ’941 Patent claims,
`
`as Patent Owner has argued during prosecution, an ex parte reexamination,
`
`covered business method reviews, and two Federal Circuit appeals. But by 1998,
`
`the earliest priority date of the ’941 Patent, the storage of license records in a BIOS
`
`memory was not a patentable distinction, as Petitioners demonstrate via three prior
`
`art references to Hellman (EX1004), Chou (EX1005), and Schneck (EX1006).
`
`The ’941 Patent has been litigated in district court and at the Patent Office in
`
`numerous cases. See Sec. II. infra. But its invalidity over Hellman, Chou and
`
`Schneck has never been fully resolved. Neither of the Federal Circuit appeals
`
`considered prior art invalidity—one appeal was limited to claim construction
`
`issues, and one appeal was limited to patent eligibility. The prior covered business
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`method reviews were denied institution on the basis that the ’941 Patent was not
`
`eligible for covered business method review. And for the two inter partes review
`
`proceedings that the Board previously instituted over Hellman, Chou and Schneck,
`
`the parties reached a settlement agreement and the IPR proceedings were
`
`subsequently terminated without a trial. Despite the Patent Owner having asserted
`
`the ’941 Patent against 10 entities over the course of more than 10 years, the
`
`invalidity of the ’941 Patent’s claims has only been considered on the merits in one
`
`instance—an ex parte reexam that did not consider Hellman, Chou, or Schneck.
`
`This Petition presents the same grounds on which the Board has recently
`
`instituted inter partes review of the ’941 patent. Specifically, in February 2021,
`
`the Board instituted review of a petition filed by, among others, TCT Mobile
`
`(US), Inc. See TCT Mobile (US) Inc. v. Ancora Techs., Inc. IPR2020-01609,
`
`Paper 7 (P.T.A.B. Feb. 16, 2021). Shortly after institution, a number of entities
`
`filed “me too” petitions, including one petition by several Sony entities. See Sony
`
`Mobile Commc’ns AB v. Ancora Techs., Inc., IPR2021-00663, Paper 1 (P.T.A.B.
`
`Mar. 15, 2021). Sony moved to join the TCT Mobile proceeding. Sony, Paper 4
`
`(Mar. 15, 2021). In June 2021, the Board instituted Sony’s petition for inter
`
`partes review and granted Sony’s joinder motion.1 TCT Mobile, Paper 25 (July
`
`1 For various reasons not relevant here, the Board denied joinder motions by
`
`HTC Corporation and LG Electronics. HTC Corp. v. Ancora Techs. Inc., IPR2021-
`
`- 2 -
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`16, 2021); Sony, Paper 17 (June 16, 2021). The parties to both the Sony and TCT
`
`Mobile IPRs subsequently settled with Patent Owner Ancora and, on July 16,
`
`2021, the Board granted the parties joint motions to terminate the joined IPR
`
`proceedings. Sony, Paper 20 (July 16, 2021). Ancora subsequently sued Roku
`
`and VIZIO (and others) for infringement later that same day.
`
`There have been no intervening events following the termination of the TCT
`
`Mobile and Sony petitions that impact the patentability of the challenged claims of
`
`the ’941 patent or the reasoning applied by the Board in instituting the TCT Mobile
`
`and Sony petitions. Those institution decisions analyzed the exact same grounds
`
`presented here and the institution rationale should apply with full force. Petitioners
`
`submit that the prior art demonstrates that storing information, a license record or
`
`otherwise, in the BIOS memory, that is used in a method to restrict unauthorized
`
`operation of software, was well-known as a way to provide increased protection
`
`against tampering with that information by, for example, a software hacker.
`
`00570, Paper 17 at 8-14 (P.T.A.B. June 10, 2021) (finding that a majority of
`
`factors under General Plastic weighed against institution because of HTC’s prior
`
`filed CBM petition); LG Elecs., Inc. v. Ancora Techs., Inc., IPR2021-00581, Paper
`
`16 at 8-12 (P.T.A.B. June 10, 2021) (finding that a majority of factors under Fintiv
`
`weighed against institution based on the advanced stages of the parallel district
`
`court proceeding).
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`Petitioners demonstrate through the combinations of Hellman, Chou, and Schneck
`
`that a person of ordinary skill in the art at the time of the invention (POSA) would
`
`have found all challenged claims obvious.
`
`For the reasons described herein and the reasons articulated by the Board in
`
`its prior institution decisions over the same grounds, Petitioners request institution
`
`of this inter partes review petition and cancellation of all challenged claims.
`
`II. MANDATORY NOTICES
`REAL PARTY-IN-INTEREST: Roku, Inc. and VIZIO, Inc. are the real parties-
`
`in-interest.
`
`RELATED MATTERS: Patent Owner has asserted the ’941 Patent against
`
`Roku and VIZIO in the following district-court litigations:
`
`• Ancora Technologies, Inc. v. Roku, Inc., Case No. 6:21-cv-00737 (W.D.
`
`Tex.), filed July 16, 2021; and
`
`• Ancora Technologies, Inc. v. VIZIO, Inc., Case No. 6:21-cv-00739, filed
`
`July 16, 2021.
`
`Petitioners are aware of the following additional district court litigations
`
`involving the ’941 Patent:
`
`• Ancora Technologies, Inc. v. Lenovo Group Limited, Case No. 1:19-cv-
`
`01712 (D. Del.), filed September 12, 2019;
`
`• Ancora Technologies, Inc. v. Samsung Electronics Co., Ltd., Case No.
`
`- 4 -
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`6:19-cv-00385 (W.D. Tex.), filed June 21, 2019;
`
`• Ancora Technologies, Inc. v. HTC America, Inc., Case No. 2:16-cv-
`
`01919 (W.D. Wash.), filed December 15, 2016;
`
`• Ancora Technologies, Inc. v. LG Electronics, Inc., Case No. 6:21-cv-
`
`00561 (W.D. Tex.), filed June 21, 2019;
`
`• Ancora Technologies, Inc. v. Google, LLC, Case No. 6:21-cv-00735
`
`(W.D. Tex.), filed July 16, 2021; and
`
`• Ancora Technologies, Inc. v. Nintendo Co., Ltd., Case No. 6:21-cv-00738
`
`(W.D. Tex.), filed July 16, 2021.
`
`The ’941 Patent has been challenged at the Patent Trial and Appeal Board in
`
`the following proceedings:
`
`Case
`Apple Inc. v. Ancora
`Technologies Inc.
`HTC America, Inc.
`v. Ancora
`Technologies Inc.
`Samsung
`Electronics Co.,
`Ltd. v. Ancora
`Technologies, Inc.
`TCT Mobile (US)
`Inc. v. Ancora
`Technologies, Inc.
`Samsung
`Electronics Co.,
`Ltd. v. Ancora
`Technologies, Inc.
`
`Filed
`Proceeding No.
`CBM2016-00023 January 8, 2016
`
`Status
`Institution Denied
`
`CBM2017-00054 May 26, 2017
`
`Institution Denied
`
`IPR2020-01184
`
`June 25, 2020
`
`Institution Denied
`
`IPR2020-01609
`
`September 10, 2020 Terminated After
`Institution
`
`IPR2021-00583
`
`February 24, 2021 Dismissed Prior
`to Institution
`
`- 5 -
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`Filed
`Proceeding No.
`IPR2021-00663 March 15, 2021
`
`Status
`Terminated After
`Institution
`
`IPR2021-00570
`
`February 19, 2021
`
`Institution Denied
`
`IPR2021-00581
`
`February 23, 2021
`
`Institution Denied
`
`IPR2021-01338 August 10, 2021
`
`Pending
`
`Case
`Sony Mobile
`Communications,
`AB v. Ancora
`Technologies, Inc.
`HTC Corporation v.
`Ancora
`Technologies, Inc.
`LG Electronics, Inc.
`v. Ancora
`Technologies, Inc.
`Nintendo Co., Ltd.
`v. Ancora
`Technologies, Inc.
`
`
`The ’941 Patent was subject to Ex Parte Reexamination Control No.
`
`90/010,560, filed May 29, 2009. An Ex Parte Reexamination Certificate was
`
`issued on June 1, 2010, adding no claims and making no amendments to the ’941
`
`Patent.
`
`LEAD AND BACKUP COUNSEL: Under 37 C.F.R. §§ 42.8(b)(3) and 42.10(a),
`
`Petitioners appoint Jon E. Wright (Reg. No. 50,720) as lead counsel and Lestin L.
`
`Kenton (Reg. No. 72,314) and Dohm Chankong (Reg. No. 70,524) as back-up
`
`counsel, each at the address: STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., 1100
`
`New York Avenue, N.W., Washington, D.C., 20005, phone (202) 371-2600, and
`
`facsimile (202) 371-2540.
`
`SERVICE INFORMATION: Petitioners consent to electronic service by email at
`
`jwright-PTAB@sternekessler.com, lkenton-PTAB@sternekessler.com,
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`dchankong-PTAB@sternekessler.com, and PTAB@sternekessler.com.
`
`
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW
` Grounds for Standing
`Petitioners certify that the ’941 Patent is available for IPR and that
`
`Petitioners are not barred or estopped from requesting IPR challenging claims of
`
`the ’941 Patent on the grounds presented here.
`
` Overview of Challenge and Relief Requested
`Petitioner requests cancellation of claims 1-3, 6-14, and 16 of the ’941
`
`Patent under pre-AIA 35 U.S.C. § 103. The grounds presented here are the same as
`
`the grounds presented in both the instituted TCT Mobile petition, TCT Mobile,
`
`Paper 1 at 21-63, the instituted Sony petition, Sony, Paper 1 at 20-60, and the
`
`grounds requested by Nintendo in IPR2021-01338.
`
`Identification of Prior Art
`1.
`Petitioners rely upon the references listed in the Table of Exhibits, including:
`
`U.S. Patent No. 4,658,093 (EX1004, “Hellman”), issued on April 14, 1987,
`
`from an application filed on July 11, 1983. Hellman is prior art under pre-AIA 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 5,892,906 (EX1005, “Chou”), issued on April 6, 1999, from
`
`an application filed on July 19, 1996. Chou is prior art under pre-AIA 35 U.S.C. §
`
`102(e).
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
`
`U.S. Patent No. 5,933,498 (EX1006, “Schneck”), issued on August 3, 1999,
`
`from an application filed on November 5, 1997, and that claims priority to an
`
`application filed on January 11, 1996. Schneck is prior art under pre-AIA 35
`
`U.S.C. § 102(e).
`
`Hellman, Chou, and Scheck were neither presented to nor discovered by the
`
`Patent Office during the original examination, the ex parte reexamination, or the
`
`covered business method review of the ’941 Patent. Hellman, Chou, and Schneck
`
`form the basis for the grounds set forth in the instituted TCT Mobile and Sony
`
`IPRs, which were subsequently terminated after settlement. See Sec. I. supra.
`
`2. Grounds for Challenge
`Basis
`Reference(s)
`Hellman, Chou
`§ 103
`Hellman, Chou, Schneck
`§ 103
`
`Ground
`1
`2
`
`
`
`Challenged Claims
`1-2, 11, 13
`1-3, 6-14, and 16
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`This Petition and the Dr. Andrew Wolfe Declaration (EX1003, “Wolfe
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`Decl.”) demonstrate a reasonable likelihood that Petitioner will prevail with respect
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`to cancellation of at least one challenged claim. See 35 U.S.C. § 314(a). Dr. Wolfe
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`submitted a substantively similar supporting declarations in the instituted TCT
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`Mobile petition, TCT Mobile, EX1003 (Sept. 10, 2020) and Nintendo’s IPR against
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`the ’941 Patent.
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`Statutory Grounds of Challenge and Legal Principles
`3.
`This Petition requests cancellation of claims 1-3, 6-14, and 16 of the ’941
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`Patent under pre-AIA 35 U.S.C. § 103. The grounds presented here are the same as
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`the grounds presented in both the instituted (but terminated) TCT Mobile petition,
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`TCT Mobile, Paper 1 at 21-63, and the instituted (but terminated) Sony petition,
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`Sony, Paper 1 at 20-60. The grounds here are also the same as those requested by
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`Nintendo in IPR2021-01338, filed August 10, 2021.
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`IV. DESCRIPTION OF TECHNOLOGY
` Overview of the Technology
`By the time of the ’941 Patent’s priority date in 1998, the field of software
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`licensing was well-developed. EX1003, Wolfe Decl., ¶¶31-35. For more than a
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`decade prior, practitioners in the field had widely recognized the new risks to
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`software piracy introduced by the transformations to digital media. Id.
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`Many entities recognized that one such risk was “copy protection” or
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`“secondary distribution.” Id. This referred to the situation where a user received a
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`valid license for a software program, but the user then duplicated the program
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`and/or the license so as to use it in an unauthorized fashion for more uses, on more
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`computers, etc. Id. This problem was of particular interest to practitioners because
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`it required the software owner to provide enough trust to the user to perform at
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`least one authorized use, as opposed to providing no trust or unlimited trust. Id.
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`While many solutions were developed, a common theme was to use some form of
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`encryption to reduce unauthorized secondary distribution of the software program.
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`Id.
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`Similarly, by 1998, the field of computer BIOS was well-developed.
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`EX1003, ¶¶36-42. Nearly all consumer end user devices contained a BIOS
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`program that was used to start up the device at power-on time. Id. Early personal
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`computers tended to store BIOS programs in separate, true ROM (read only
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`memory) memory module, i.e., memory that could not be re-written in the field. Id.
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`By the 1990s, it was more common to store BIOS programs in “ROM” that could
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`actually be rewritten in some form. Id. Early forms of this rewritable ROM often
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`required physically accessing the memory chip with a special device. Id.
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`By the ’941 Patent’s priority date in 1998, electrically-erasable
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`programmable read-only memory (EEPROM) was a popular medium for BIOS
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`memory. Id. EEPROM chips had the benefit of being re-writable by software
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`without the need to remove the chip from the computer. Id. This aspect of
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`EEPROM was considered beneficial because it became common prior to the ’941
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`priority date in 1998 for device manufacturers to provide updates to BIOS while
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`the devices were in the field. Id. EEPROM allowed that functionality. Id.
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` Overview of the ’941 Patent
`The ’941 Patent issued from U.S. Patent Application No. 09/164,777, filed
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`on October 1, 1998. It claims priority to Israeli Patent Application 124571, which
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`was filed on May 21, 1998. EX1001, Cover Page. Therefore, the priority date of
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`the ’941 Patent is no earlier than May 21, 1998.
`
`The Specification and Alleged Invention
`1.
`The ’941 Patent invention is directed to “restricting an unauthorized
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`software program’s operation.” EX1001, 1:6-8. The ’941 Patent recognizes that it
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`was known in the field to store a “license signature” for a program in a computer’s
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`“volatile memory (e.g. hard disk).”2 Id., 1:19-21. The ’941 Patent alleges that such
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`techniques were “appropriate for restricting honest software users,” but they were
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`“vulnerable to attack at the hands of skilled system’s programmers (e.g.,
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`‘hackers’).” Id., 1:21-24.
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`The ’941 Patent proposes to solve this problem based on “the use of a key
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`and of a record, which have been written into the non-volatile memory of a
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`computer.” Id., 1:38-43. The “key” is stored “during manufacture” in a “ROM
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`section” of a “BIOS module,” and it “constitutes, effectively, a unique
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`identification code for the host computer.” Id., 1:44-52. The “license record” is
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`stored in “another (second) non-volatile section of the BIOS, e.g., E2PROM (or the
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`2 Despite this contradictory example (i.e., that a hard disk is exemplary of
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`volatile memory), the Federal Circuit held that “volatile memory” has its ordinary
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`meaning, Ancora Technologies, Inc. v. Apple, Inc., 744 F.3d 732, 739 (Fed. Cir.
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`2014), such as “memory whose data is not maintained when the power is
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`removed,” id., 737.
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`ROM).”3 Id., 1:59-2:1. The ’941 Patent distinguishes the storage location of the
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`key and the license record: “It should be noted that unlike the first non-volatile
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`section, the data in the second non-volatile memory may optionally be erased or
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`modified (using E2PROM manipulation commands), so as to enable to add,
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`modify or remove licenses.” Id. 2:1-5. The key is used to encrypt the license
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`record, creating a locally stored, device-specific license record for the program
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`under license. Id., 1:59-2:26.
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`The ’941 Patent alleges two primary benefits of the invention. First, by
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`encrypting the license record with a key unique to the host computer and stored in
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`ROM, a program licensed for one computer cannot simply be transferred with the
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`license record to another computer, because the key for the second computer will
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`be different. Id., 2:27-47. “It is important to note that the hacker is unable to
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`modify the key in the ROM of the second computer to” the key of the first
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`computer because “the contents of the ROM is established during manufacture and
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`is practically invariable.” Id., 2:42-47.
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`Second: “An important advantage in utilizing non-volatile memory such as
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`that residing in the BIOS is that the required level of system programming
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`expertise that is necessary to intercept or modify commands, interacting with the
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`BIOS, is substantially higher than those needed for tampering with data residing in
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`3 E2PROM is another spelling of EEPROM.
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`Petition for Inter Partes Review of U.S. Patent No. 6,411,941
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`volatile memory such as hard disk.” Id., 3:4-9. In other words, because
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`manipulation of E2PROM was more difficult than manipulation of the device’s
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`RAM or hard disk, the license record could be stored in E2PROM to make it more
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`tamper proof. Id., 3:4-17.
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`The alleged invention is depicted with respect to Figure 1 of the ’941 Patent,
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`shown below. The first non-volatile memory (4)—“e.g. the ROM section of the
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`BIOS,” id., 5:9-16—stores a key (8). The second non-volatile memory (5)— “e.g.
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`the E2PROM section of the BIOS,” id.—stores license records (10, 11, 12).
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`The volatile memory (6)—“e.g. the internal RAM memory of the computer,”
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`id.— stores a license program (16).
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`Petition for Inter Partes Review of U.S. Patent No. 6,