Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 1 of 7
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`Exhibit 9
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 2 of 7
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`UNITED STATES DISTRICT COURT
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`WESTERN DISTRICT OF WASHINGTON
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`AT SEATTLE
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`ANCORA TECHNOLOGIES, INC.
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`Plaintiff,
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`v.
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`HTC AMERMICA, INC., a Washington
`Corporation, HTC CORPORATION, a
`Taiwanese corporation
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`Defendants.
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`Case No. 2:16-cv-01919-RAJ
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`DECLARATION OF IAN JESTICE
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`ANCORA_00003334
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`766
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 3 of 7
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`I, Ian Jestice, declare as follows:
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`1.
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`2.
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`I have been engaged by Ancora as a technical expert in this case.
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`I have over 38 years of experience with computer storage devices and embedded
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`software systems for industry and consumer products, including BootROM and BIOS. I have
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`written and designed BIOS, device drivers, software and firmware for Windows, Linux, VxWorks,
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`QNX and other embedded real-time operating systems (RTOSs). I am a software developer
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`experienced with various programming languages, including C, C++, Delphi, C# and assembly. I
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`hold a degree in Telecommunications and Computer Science from City and Guilds Institute of
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`London. I previously provided a declaration regarding the construction of claim terms for the ‘941
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`Patent and incorporate that declaration herein.
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`3.
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`I am being compensated at $360 and my CV is attached as Exhibit A which includes
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`my publications in the last 10 years and my expert testimony in the last four years.
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`4.
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`I have reviewed U.S. Patent No. 6,411,941 (‘941 patent) and its file history,
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`including the reexamination file history in which the Patent Office reconfirmed the patentability
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`of claims of the ‘941 patent. Because of my education and experience summarized above, I am
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`readily familiar with the terms and concepts disclosed in the patent and recited in the claims.
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`5.
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`I understand that disputes have arisen between the parties regarding the meaning
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`and definiteness of “agent” as that term is used in the asserted claims of the ‘941 patent.
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`6.
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`The term “agent” is a well-defined and understood term in the computer industry.
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`An agent is a software program or routine. An agent would be understood by those skilled in the
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`art to have that definitive structure. I understand that HTC has presented a declaration asserting
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`Declaration of Ian Jestice
`Case No. 2:16-cv-01919-RAJ
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`1
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`ANCORA_00003335
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`767
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 4 of 7
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`“A person or ordinary skill in the art would not understand ‘agent’ of claims 1 and 18 to have any
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`definite structure.” This is not supported by the intrinsic record or by the extrinsic evidence cited
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`by HTC. An agent has a definite structure as a software routine as claimed in the ‘941 patent.
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`7.
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`Claim 1 of the ‘941 Patent states: “using an agent to set up a verification structure
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`in the erasable, non-volatile memory of the BIOS.” The specification provides, as an example,
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`that the modification, removal or addition of data in the erasable, non-volatile memory of the BIOS
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`can be performed “using E2PROM manipulation commands.” (‘941 Patent at 1:65-2:4.) Such
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`commands are encoded in a software routine and are well-known to those skilled in the art.
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`8.
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`In another example, the specification also states that a bureau can also be employed
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`in order to assist in setting “setting up the verification structure” using a series of steps. (‘941
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`Patent at 3:42-50, see also Claim 3.) The use of a bureau “helps to limit the understanding of
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`potential software hackers; since they can not observe how these functions are constructed.” (‘941
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`Patent at 3:44-46.) Similarly, steps of setting up the verification structure are set forth at 6:18-22.
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`But, setting up the verification structure is one step in the claimed method that recites several steps
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`as graphically depicted in Figure 2.
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`9.
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`The term “agent” was not included in claim 1 originally presented to the Patent
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`Office. Claim 1, however, included the term “program” to refer to the software program to be
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`verified, i.e. “verifying the program.” I understand that during prosecution, the term “agent” was
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`added to the claim based on the suggestion of the Examiner to distinguish the software routine that
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`wrote to the BIOS from the software program that was already claimed. (ANCC 119, 11/9/2001
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`Interview Summary, “Agreement was reached” regarding “Storage of license data using BIOS 112
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`corrections editing independent claim language.”) The Examiner, of course, understood the well-
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`Declaration of Ian Jestice
`Case No. 2:16-cv-01919-RAJ
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`2
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`ANCORA_00003336
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`768
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 5 of 7
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`defined and understood meaning of the term “agent” when the Examiner suggested this
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`clarification.
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`10.
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`Additional intrinsic evidence confirms the meaning of “agent” as used in claim 1
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`of the ‘941 Patent. First, the Examiner expressly defined “agent” with a software program during
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`prosecution. The Examiner stated: “Misra et. al. also teach encryption keys and programs
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`(“agent”) used in the license collection process.” (ANCC 144, 11/14/2001 OA at 6.) The Examiner
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`cites portions of U.S. Patent No. 6,189,146 (Misra et al.) including its statement that: “These
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`software programs are preferably implemented as part of the client’s operating system.” (Misra at
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`12:3-31.) Misra’s agents refer to software programs, confirming the well-understood meaning in
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`the art of the claim term “agent.” Third, in the reasons for allowance, the Examiner confirmed that
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`Misra et al. disclosed “a method for licensing software that uses agents to manage software
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`licenses.” (ANCC 161, 03/28/2002 NOA at 3.) Third, at the request of Microsoft, the ‘941 Patent
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`obtained a Re-Examination Certificate from the Patent Office, the Patent Office had no trouble
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`understanding the claim language, including the term “agent” where Microsoft’s positions relied
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`upon construing “agent” as a “program.” (See, e.g., ANCC 54062, Request at 16.)
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`11. While I understand that HTC now takes the position that “agent” can be software,
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`hardware or both, there is no support for this position in the intrinsic evidence of the ‘941 patent.
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`First, “agent” has a specific meaning in the art and that is why it was chosen by the examiner to
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`distinguish the software program used for setting up the verification structure from the program to
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`be verified. Second, HTC already admitted to the Federal Circuit that an agent is a software
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`routine. (HTC Brief at 22: “The claims simply direct an agent (e.g., a software routine) to [set up
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`a verification structure] without further explanation.”) Third, the extrinsic evidence identified by
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`Declaration of Ian Jestice
`Case No. 2:16-cv-01919-RAJ
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`3
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`ANCORA_00003337
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`769
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 6 of 7
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`HTC supports the well-understood meaning to those skilled in the art that I have provided in this
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`declaration.
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`12.
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`The extrinsic evidence relied upon by HTC does not support its position. I
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`understand that HTC cites to U.S. Patent No. 5,568,552 for support. But, the ‘552 patent uses the
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`phrase “hardware agent” which distinguishes it from the use of “agent” in the ‘941 Patent. “Agent”
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`is a software program routine which was described as an example in the preferred embodiment as
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`“E2PROM manipulation commands” which is software.
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`13.
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`I understand that HTC relies on extrinsic computer dictionaries for support. (DN
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`58-1.) The Microsoft dictionary defines agent as “A program . . . “ Newton’s Telecom dictionary
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`discusses airline agents, but then states: “an ‘agent’ – a kind of software program.. . ” The
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`Encyclopedia of Computer Science states that “multi-agent systems” are “programs [that] interact
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`or work together over a communications network to perform some set of tasks jointly or to satisfy
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`some set of goals.” PC Magazine also states that agents are “a software routine that waits in the
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`background and performs an action when a specified event occurs.” The Telecommunications
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`Handbook states that “An agent is a program.” HTC establishes with its own evidence that
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`“Agent” is well-understood in the art as a software program or routine.
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`14.
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`A person of ordinary skill in the art would understand that “using an agent to set up
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`a verification structure in erasable, non-volatile memory of the BIOS,” in light of the specification,
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`refers to using software programs or routines to set up a verification structure in the erasable, non-
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`volatile memory of the BIOS. For example, one could use “E2PROM manipulation commands”
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`such as those from the DMI Specification in the manner described in the intrinsic record at ANCC
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`183-184 to perform this single step in the multi-step claimed method. An “agent” has a defined
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`meaning in the art and is not a generic placeholder without structure or meaning.
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`Declaration of Ian Jestice
`Case No. 2:16-cv-01919-RAJ
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`4
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`ANCORA_00003338
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`770
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`Case 1:20-cv-00034-ADA Document 44-10 Filed 03/20/20 Page 7 of 7
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`I declare under penalty of perjury that the foregoing is true and correct to the best of
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`my knowledge.
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`Date:___8/26/2019______________
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`_____________________________
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` Ian Jestice
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`Declaration of Ian Jestice
`Case No. 2:16-cv-01919-RAJ
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`5
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`ANCORA_00003339
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`771
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