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`
`Exhibit 29
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`

`

`Case: 18-1404 Document: 19 Page: 1 Filed: 03/14/2018
`Case 1:20-cv-00034-ADA Document 49-6 Filed 04/10/20 Page 2 of 48
`
`No. 2018-1404
`
`
`United States Court of Appeals
`for the Federal Circuit
`
`
`ANCORA TECHNOLOGIES, INC.,
`Plaintiff-Appellant,
`
`v.
`HTC AMERICA, INC., HTC CORPORATION,
`Defendants-Appellees.
`
`
`Appeal from the United States District Court for the Western
`District of Washington, Case No. 2:16-cv-01919-RAJ
`
`
`CORRECTED BRIEF OF APPELLANT
`
`Mark A. Cantor
`Marc Lorelli
`John S. LeRoy
`John P. Rondini
`BROOKS KUSHMAN P.C.
`1000 Town Center
`Twenty-Second Floor
`Southfield, MI 48075-1238
`(248) 358-4400
`
`Counsel for Appellant
`
`
`
`
`
`
`
`
`
`
`March 13, 2018
`
`
`
`
`
`

`

`Case: 18-1404 Document: 19 Page: 2 Filed: 03/14/2018
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`CERTIFICATE OF INTEREST
`
`
`
`
`
`
`Counsel for Appellant, Ancora Technologies, Inc. certifies the following:
`
`1.
`
`The full name of party represented by me:
`
` Ancora Technologies, Inc.
`
`
`
`
`
`
`
`2.
`
`The name of the real party in interest (please only include any real party
`
`in interest NOT identified in Question 3) represented by me:
`
` None
`
`
`
`
`
`
`
`3.
`
`Parent corporations and publicly held companies that own 10 % or more
`
`of the stock of the party:
`
` None
`
`
`
`
`
`
`
`4.
`
`The names of all law firms and the partners or associates that appeared
`
`for the party or amicus now represented by me in the trial court or agency or are
`
`expected to appear in this court (and who have not or will not enter an appearance
`
`in this case) are: Savitt, Bruce and Willey; Duncan Manville; Sarah Bigelow
`
`
`
`
`
`5.
`
`The title and number of any case known to counsel to be pending in this
`
`
`
`or any other court or agency that will directly affect or be directly affected by this
`
`court’s decision in the pending appeal. See Fed. Cir. R. 47.4(a)(5) and 47.5(b). (The
`
`parties should attach continuation pages as necessary.) None
`
`
`
`
`
`
`
`i
`
`

`

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`
`TABLE OF CONTENTS
`
`
`
`CERTIFICATE OF INTEREST ................................................................................ i
`TABLE OF AUTHORITIES ................................................................................... iv
`STATEMENT OF RELATED CASES ..................................................................... 1
`STATEMENT OF JURISDICTION.......................................................................... 1
`STATEMENT OF THE ISSUES............................................................................... 1
`STATEMENT OF THE CASE .................................................................................. 3
`STATEMENT OF THE FACTS ............................................................................... 3
`A.
`The Patent-In-Suit ............................................................................................ 3
`B.
`The intrinsic record confirms the innovation of the ‘941 Patent ..................... 8
`C.
`District Court proceedings .............................................................................12
`SUMMARY OF THE ARGUMENT ......................................................................13
`APPLICABLE LEGAL PRINCIPLES ....................................................................15
`A.
`Standard of Review........................................................................................15
`B.
`Legal framework for motions to dismiss on the pleadings ...........................16
`C.
`Legal framework for the § 101 analysis ........................................................16
`ARGUMENT ...........................................................................................................18
`A. Alice step one: The ‘941 Patent claims are directed to an improvement
`in computer functionality and are not abstract ..............................................19
`1.
`The District Court erred in dismissing the ‘941 Patent’s
`technological improvement over the prior art .................................... 24
`The District Court erred in ignoring and contradicting the
`specification ........................................................................................ 25
`
`2.
`
`ii
`
`

`

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`
`3.
`
`2.
`
`3.
`
`B.
`
`C.
`
`The District Court failed to provide any claim based analysis
`showing that the claims of the ‘941 Patent are directed to an
`abstract idea ........................................................................................ 28
`Alice step two: The ‘941 Patent claims involve an inventive concept ..........31
`1.
`The District Court erred when it failed to consider the Patent
`Office record regarding the inventive concept embodied in Claim
`1 of the ‘941 Patent ............................................................................ 34
`The District Court erred when it failed to consider the scope of
`the claims and held that the ‘941 Patent claims a generic
`computer performing generic computer functions ............................. 35
`The District Court erred in making factual findings against
`Ancora at the pleading stage .............................................................. 37
`The District Court erred when it failed to address or consider that the
`‘941 Patent claims do not raise pre-emption concerns ..................................38
`CONCLUSION AND RELIEF SOUGHT ..............................................................40
`ADDENDUM
`Order Granting Motion to Dismiss, dated 12/14/17. . . . . . Appx1 – Appx12
`
`Judgment, dated 12/20/17. . . . . . . . . . . . . . . . . . . . . . . . . . Appx13
`
`USPN 6,411,941, dated: 6/25/02. . . . . . . . . . .. . . . . . . . ..Appx20 – Appx28
`
`
`CERTIFICATE OF ELECTRONIC SERVICE
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME, TYPEFACE
`AND TYPE STYLE REQUIREMENTS
`
`
`
`
`
`
`iii
`
`

`

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`
`TABLE OF AUTHORITIES
`Cases
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`
`134 S. Ct. 2347, 2354 (2014) ................. 14, 15, 17, 18, 19, 20, 24, 25, 26, 30,
`
` .................................................................................................... 32, 35, 38, 39
`
`Allergan, Inc. v. Athena Cosmetics, Inc.,
`
`640 F.3d 1377 (Fed. Cir. 2011) .....................................................................15
`
`Ancora Technologies, Inc. v. Apple, Inc.,
`
`744 F. 3d 732 (Fed. Cir. 2014) ................. 1, 11, 14, 23, 27, 33, 34, 36, 37, 38
`
`Ancora Techs. Inc. v. Apple Inc.,
`
`2012 WL 6738761 at *2 (N.D. Cal. Dec. 31, 2012) ....................................... 9
`
`Ashcroft v. Iqbal,
`
`556 U.S. 662 (2009).......................................................................................16
`
`Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
`
`827 F.3d 1341 (Fed. Cir. 2016) ...................................... 14, 31, 32, 35, 38, 39
`
`Bell Atlantic Corp. v. Twombly,
`
`550 U.S. 544 (2007).......................................................................................16
`
`Berkmeimer v. HP, Inc. et. al.,
`
`881 F.3d 1360 (Fed. Cir. 2018) .............................................................. 37, 38
`
`Bilski v. Kappos,
`
`561 U.S. 593 (2010).......................................................................................16
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`
`773 F.3d 1245 (Fed. Cir. 2014) .............................................................. 19, 20
`
`Diamond v. Diehr,
`
`450 U.S. 175 (1981).......................................................................................17
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ........ 13, 19, 20, 23, 24, 25, 26, 27, 30, 31, 35
`
`
`
`iv
`
`

`

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`
`
`Erickson v. Pardus,
`
`551 U.S. 89 (2007).........................................................................................16
`
`Hitt v. City of Pasadena,
`
`561 F.2d 606 (5th Cir. 1977) .........................................................................16
`
`Hybritech Inc. v. Monoclonal Antibodies, Inc.,
`
`802 F.2d 1367 (Fed. Cir. 1986) .....................................................................27
`
`In re Bilski,
`
`545 F.3d 943 (Fed. Cir. 2008) .......................................................................18
`
`Intellectual Ventures I LLC v. Erie Indem. Co.,
`
`850 F.3d 1315 (Fed. Cir. 2015) .....................................................................28
`
`Jones v. Hardy,
`
`727 F.2d 1524 (Fed. Cir. 1984) .....................................................................18
`
`King Pharms., Inc. v. Eon Labs, Inc.,
`
`616 F.3d 1267 (Fed. Cir. 2010) .....................................................................17
`
`Mayo Collaborative Services v. Prometheus Labs., Inc.
`132 S. Ct. 1289 (2012) ............................................................................ 17, 39
`
`
`McRO, Inc. v. Bandai Namco Games America Inc.,
`
`837 F.3d 1299 (Fed. Cir. 2016) .....................................................................30
`
`Molecular Pathology v. Myriad Genetics, Inc.
`
`133 S. Ct. 2107 (2013) ...................................................................................18
`
`Phillips v. County of Allegheny,
`
`515 F.3d 224 (3d Cir. 2008) ..........................................................................15
`
`Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
`
`897 F.2d 511 (Fed. Cir. 2001) .......................................................................11
`
`Trading Techs. Int’l, Inc. v. CQC, Inc.,
`
`675 Fed.Appx. 1001 (Fed. Cir. 2017) .................................................... 19, 20
`
`
`v
`
`

`

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`
`
`Viskase Corp. v. Am. Nat. Can Co.,
`
` 261 F.3d 1316, 1327, n. 2 (Fed. Cir. 2001) ..................................................11
`
`Visual Memory LLC v. NVIDIA Corp.,
`
`867 F.3d 1253 (Fed. Cir. 2017) .................................................. 13, 20, 25, 27
`Statutes
`35 U.S.C. § 101 ................................................................... 1, 2, 3, 13, 16, 17, 38, 40
`35 U.S.C. § 282 ........................................................................................................18
`
`
`vi
`
`

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`STATEMENT OF RELATED CASES
`There have been no other appeals before this or any other appellate court
`
`stemming from the civil action giving rise to this appeal.
`
`U.S. Patent No. 6,411,941 (“the ‘941 Patent”) was the subject of an appeal to
`
`this Court in an earlier litigation between Ancora Technologies, Inc. and Apple, Inc.
`
`This Court issued a decision involving claim construction and validity in Ancora
`
`Technologies, Inc. v. Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014) (“Ancora I”).
`
`STATEMENT OF JURISDICTION
`The United States District Court for the Western District of Washington (the
`
`“District Court”) had jurisdiction over this suit for patent infringement under 28
`
`U.S.C. §§ 1331 and 1338(a). This Court has exclusive jurisdiction over this appeal
`
`under 28 U.S.C. § 1295(a)(1). The District Court entered a final judgment of
`
`invalidity on December 20, 2017. Appx1-12; Appx13. Plaintiff Ancora
`
`Technologies, Inc. (“Ancora”) filed a timely Notice of Appeal on December 29,
`
`2017. Appx325-327.
`
`STATEMENT OF THE ISSUES
`1. Whether the District Court erred in holding U.S. Patent No. 6,411,941
`
`invalid pursuant to 35 U.S.C. § 101;
`
`2. Whether the District Court erred in holding the ‘941 Patent to be
`
`directed to an abstract idea as opposed to the claimed technological
`
`1
`
`

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`improvement; and, alternatively, whether the District Court erred in
`
`characterizing the claims too broadly;
`
`3. Whether the District Court erred in holding the ‘941 Patent claims
`
`lacked an inventive concept contrary to the Patent Office’s Reasons for
`
`Allowance; and, alternatively because the District Court failed to
`
`consider the scope the claimed invention; and
`
`4. Whether the District Court erred in holding the ‘941 Patent invalid
`
`pursuant to 35 U.S.C. § 101 without identification of any pre-emption
`
`concern implicated by the specific technological improvement recited
`
`by the claims of the ‘941 Patent.
`
`2
`
`

`

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`STATEMENT OF THE CASE
`Ancora appeals the District Court judgment on the pleadings that the ‘941
`
`Patent was invalid under 35 U.S.C. § 101. Appx1-12. Following entry of judgment
`
`(Appx13), Ancora timely appealed to this Court. Appx325-327.
`
`A.
`
`STATEMENT OF THE FACTS
`The Patent-In-Suit
`The ‘941 Patent (Appx20-28) discloses and claims a specific and novel
`
`approach to reducing software piracy. As the “Background of the Invention”
`
`explains, prior to the ‘941 Patent both “hardware” and “software” approaches existed
`
`for attempting to reduce the known problem of software piracy. ‘941 Patent at 1:12-
`
`32. For example, hardware “dongles” were externally inserted into a computer’s
`
`“parallel” port to authenticate a particular software program for execution on a
`
`particular computer. Id. at 1:27-29. Although “dongles” were effective at reducing
`
`piracy, they were expensive to implement and cumbersome for customers. Id. at
`
`1:26-32. Another approach relied on software “license keys” that could simply be
`
`stored on the hard drive of a general-purpose computer. (Id. at 1:19-21.) Such
`
`software-based approaches, while efficient, were not effective at reducing piracy.
`
`Id. at 1:19-26.
`
`Facing these shortcomings in the existing technology, the ‘941 Patent
`
`introduced a new approach which involved modifying the computer in a non-
`
`conventional manner to more effectively reduce software piracy. In one example, a
`
`3
`
`

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`“verification structure” is set up in an erasable memory location of the computer’s
`
`“Basic Input Output System” (“BIOS”) in which a software verification “license
`
`record” is placed for later use during a software “verification” process. Id. at 1:59-
`
`2:26. The verification process acts to “halt” or restrict unauthorized software
`
`operation on any computer lacking the claimed BIOS modification or the key stored
`
`in the verification structure. Id. at 1:44-2:27. The ‘941 Patent recognized that, by
`
`storing the verification “license record” in BIOS, no additional hardware (e.g., a
`
`“dongle”) would be necessary, and such a solution would also deter hackers from
`
`illegally copying software programs. Id. at 3:4-17.
`
`The ‘941 Patent explains that the patented approach diverges from the
`
`“conventional computer” having a “conventional BIOS module” comprising ROM
`
`(Read Only Memory), the contents of which “cannot be removed or modified.”
`
`Thus, consider a conventional computer having a conventional BIOS
`module in which a key was embedded at the ROM [Read Only
`Memory] section thereof, during manufacture. The key constitutes,
`effectively, a unique identification code for the host computer. It is
`important to note that the key is stored in a non-volatile portion of the
`BIOS, i.e. it cannot be removed or modified.
`Id. at 1:46-52 (emphasis added).
`
`To achieve the invention, the ‘941 Patent explains that a new “verification
`
`structure” is installed in the “erasable” “E2PROM” section of the BIOS. This
`
`installation, as an example from the specification, is performed using “E2PROM
`
`manipulation commands.” Id. at 2:1-5. The specification expressly distinguishes
`
`4
`
`

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`this modifiable BIOS configuration from the “conventional” non-modifiable BIOS
`
`configuration described above:
`
`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 encrypting 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 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 remove licenses.
`Id. at 1:59-2:5 (emphasis added).
`
`The ‘941 Patent claims do not merely employ “conventional BIOS” to
`
`enhance the prevention of illegal copying of software programs. The claims recite
`
`manipulating the computer’s BIOS to “set up” a “verification structure” in an
`
`“erasable, non-volatile memory of the BIOS.” The claims recite that the physical
`
`“erasable” BIOS memory is distinct from the physical “Read Only Memory” or
`
`“ROM” (which is not “erasable”), and distinct from a separate physical “volatile”
`
`memory area of the computer. Id. at 5:9-16. The claimed verification structure
`
`established in the erasable memory area of the BIOS is used to store one or more
`
`“license records” associated with a computer program. The license records are then
`
`used to verify whether a computer program is licensed to execute on the particular
`
`5
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`

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`computer on which the “verification structure” has been set up in the erasable BIOS,
`
`and in which the “license record” is stored.
`
`Claim 1 of the ‘941 patent reads as follows:
`
`1. A method of restricting software operation within a license for use
`with a computer including an erasable, non-volatile memory area of a
`BIOS of the computer, and a volatile memory area; the method
`comprising the steps of:
`selecting a program residing in the volatile memory,
`using an agent to set up a verification structure in the erasable,
`non-volatile memory of the BIOS, the verification structure
`accommodating data that includes at least one license record,
`verifying the program using at least the verification structure
`from the erasable non-volatile memory of the BIOS, and
`acting on the program according to the verification.
`
`For illustrative purposes, the figure below demonstrates how the invention of
`
`claim 1 modifies the “BIOS” (shown in yellow) by setting up a “verification
`
`structure” in BIOS – a “structure” that did not previously exist in “conventional
`
`BIOS.” Id., claim 1, 1:46-52, 6:64-67. This “verification structure” is set up to
`
`accommodate data to include a “license record” corresponding to a computer
`
`program.
`
`6
`
`

`

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`
`
`Appx259.
`
`Claim 1 uses this novel “verification structure” to “verify” a computer
`
`program located in the computer’s volatile memory (shown in orange). ‘941 Patent,
`
`7:1-3. The verification step then determines whether the computer program will be
`
`permitted to run on the computer or whether another action is required: “acting on
`
`the program according to the verification.” Id. at 7:4. For example, the program
`
`may be stopped or erased, or the user may be informed of the unlicensed status of
`
`the program. Id. at 2:20-26, 6:40-52. The claimed process achieves the stated goal
`
`of the invention which is to “restrict[] unauthorized software program’s operation.”
`
`Id. at 1:6-8.
`
`7
`
`

`

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`B.
`
`The intrinsic record confirms the innovation of the ‘941
`Patent
`The approach to reducing software piracy claimed in the ‘941 Patent was a
`
`significant innovation in 1998 when the application for the ‘941 Patent was filed. In
`
`its Reasons for Allowance during the original examination of the ‘941 Patent, the
`
`USPTO summarized the state-of-the-art at the time, and the inventive concept of
`
`claim 1:
`
`It is well known to those of ordinary skill in the art of software licensing
`to monitor the use of software using special code that enforces the
`preferences of the software provider (e.g. creator, distributor, or service
`provider), or provider and end-user, by restricting the manner in which
`an end-user can manipulate (e.g. print, save, redistribute, customize)
`the software. For example, Ginter et al. (US 5,892,900) implement
`their software distribution system by dynamically linking a verification
`structure, such as a PERC or permission record, to software content that
`dynamically control how the software, and its associated administrative
`data, may be distributed and used (column 155, lines 46-51). Misra et
`al (US 6,189,146) disclose a method for licensing software that uses
`agents to manage software licenses, and stores the licenses in persistent
`non-volatile storage (column 12, lines 8-31). Neither reference teaches
`utilizing BIOS as the non-volatile means for storing a licensed software
`verification structure. Ewertz et al (UW 5,479,639) teach the use of
`BIOS memory for storing licensing numbers. Hence, it appears
`initially, that to one of ordinary skill of the art, the combination of
`Ewertz et al. with either Ginter et al. and/or Misra et al., would render
`the present invention obvious. However, the key distinction between
`the present invention and the closest prior 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 BIOS level, 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 BIOS to verify the program using
`the verification structure and having a user act on the program
`according to the verification. Further, it is well known to those of
`
`8
`
`

`

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`ordinary skill of the art that a computer BIOS is not setup to manage
`a software license verification structure. The present invention
`overcomes this difficulty by using an agent to set up a verification
`structure in the erasable, non-volatile memory of the BIOS.
`Appx282-283, emphasis added.
`
`In 2009, Microsoft petitioned the USPTO to re-examine the patentability of
`
`all claims of the ‘941 Patent in view of the closest prior art Microsoft could locate.
`
`In 2010, the USPTO rejected Microsoft’s invalidity assertion, and confirmed the
`
`patentability of each claim. Appx288-289.
`
`In a 2012 claim construction Order in Ancora Techs., Inc. v. Apple Inc., the
`
`Northern District of California summarized how the ‘941 Patent describes a
`
`technical innovation over the prior art “hardware” and “software” approaches:
`
`Patentees developed a third approach that had the advantages of both
`the hardware approach and software approach without
`the
`disadvantages of either. Patentees identified available memory space
`in hardware stored on the computer’s motherboard, the BIOS, which
`they repurposed to store software licensing technology. The inventive
`aspect of the ‘941 Patent is that the writable, non-volatile memory[ ] of
`the BIOS is not ordinarily considered to be a storage medium for
`software licensing technology. The advantage of using the BIOS for
`this purpose is that the level of programming expertise required to
`tamper with data stored in the BIOS is substantially greater than the
`expertise needed to tamper with data residing in volatile memory, and
`unsuccessful tampering comes with higher risk as it could render the
`computer inoperable.
`Ancora Techs. Inc. v. Apple Inc., 2012 WL 6738761 at *2 (N.D. Cal. Dec. 31, 2012).
`
`9
`
`

`

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`In addressing portions of the intrinsic record, the Federal Circuit also
`
`summarized this distinction between the ‘941 Patent and the prior art references
`
`(Misra and Ewertz) addressed during examination:
`
`[T]he applicants distinguished their invention over a combination of
`two references: one disclosed storage in the BIOS memory area by the
`BIOS software itself; the other disclosed software implemented in or
`through an operating system. The applicants explained that their
`invention differed from the prior art in that it both operated as an
`application running through an operating system and used the BIOS
`level for data storage and retrieval – a combination that was not
`previously taught and that an ordinarily skilled application writer
`would not employ:
`[T]here is no suggestion or motivation to combine Misra
`and Ewertz in the manner suggested in the Office Action.
`BIOS
`is a configuration utility.
` Software
`license
`management applications, such as the one of the present
`invention, are operating system (OS) level programs. . . .
`[W]hen BIOS is running, the computer is in a configuration
`mode, hence OS is not running. Thus, BIOS and OS level
`programs are normally mutually exclusive.
`. . .
`[T]he present invention proceeds against conventional
`wisdom in the art. Using BIOS to store application data
`such as that stored in Misra’s local cache for licenses is not
`obvious. The BIOS area is not considered a storage area for
`computer applications. An ordinary skilled artisan would
`not consider the BIOS as a storage medium to preserve
`application data for at least two reasons.
`First, . . . [a]n ordinary person skilled in the art makes use
`of OS features to write data to storage mediums. There is
`no OS support whatsoever to write data to the system BIOS.
`Therefore, an ordinary person skilled in the art would not
`consider the BIOS as a possible storage medium. . . .
`
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`Second, no 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.
`Ancora I, 744 F.3d at 735–36 (emphasis added); Appx261-262.1
`
`
`
`On May 26, 2017, HTC Corporation and HTC America, Inc. (collectively
`
`“HTC”) filed a Covered Business Method Petition requesting review of claims 1-19
`
`of the ‘941 Patent. Appx308. On December 1, 2017, the Patent Trial and Appeal
`
`Board (“PTAB”) denied institution of HTC’s petition explaining that “the ‘941
`
`patent is not a covered business method patent under AIA § 18(d)(1). Specifically,
`
`the PTAB reviewed the specification and claim 1 and found that the ‘941 Patent was
`
`a “technological invention.” Appx312-321.
`
`
`
`As explained by the PTAB, the inventors sought to address the following
`
`technical problem:
`
`The “problem” the ‘941 patent seeks to address is the technical
`problems resulting from the vulnerability of license authentication and
`software restriction using conventional data storage techniques—
`software based products that are vulnerable to hacking and hardware
`based products that are expensive, inconvenient, and not suitable for
`downloaded software. Ex. 1001, 1:19-32. In other words, the claims
`of the ‘941 patent recite a technological improvement to problems
`arising in prior art software and hardware methods of restricting an
`
`
`1 This portion of the prosecution history was cited in Ancora’s response brief in the
`District Court (Appx260-262) and also in Ancora I. Furthermore, this Court can
`take judicial notice of the ’941 Patent and prosecution history. Standard Havens
`Prods., Inc. v. Gencor Indus., Inc., 897 F.2d 511, 514 n. 3 (Fed. Cir. 2001); Viskase
`Corp. v. Am. Nat. Can Co., 261 F.3d 1316, 1327, n. 2 (Fed. Cir. 2001).
`
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`unauthorized software program’s operation. Thus, we determine the
`disclosed method addresses a “technical problem.”
`
`Appx319.
`
`
`
`The technical solution of the ‘941 Patent was also explained by the PTAB:
`
`Specifically, the disclosed method modifies the BIOS, which the ‘941
`patent contends results in reduced vulnerability to “hackers.” See Ex.
`1001, 1:44–2:46. As the ‘941 specification explains:
`
`
`[a]n important advantage in utilizing non-volatile memory
`such as that residing in the BIOS is that the required level
`of system programming expertise that is necessary to
`intercept of modify commands, interacting with the BIOS,
`is substantially higher than those needed for tampering
`with data residing in volatile memory such as [a] hard disk.
`
`
`Ex. 1001, 3:4–9. “Furthermore, there is a much higher cost tot eh
`programmer, if his tampering is unsuccessful, i.e. if data residing in the
`BIOS (which is necessary for the computer operability) is inadvertently
`charged by the hacker.” Id. at 3:9–13. Thus, we are sufficiently
`persuaded that the ‘941 patent’s solution to the addressed problem is
`rooted in technology, and thus, is a “technical solution.”
`
`Appx320.
`
`
`
`The PTAB also explained why the claims of the ‘941 Patent are novel
`
`and non-obvious in the face of HTC’s challenges. Appx11.
`
`C. District Court proceedings
`Approximately four months after Ancora filed this suit, Appellee HTC
`
`brought a motion to dismiss on the pleadings. Appx46-80. Ancora opposed the
`
`motion on all grounds asserted. Appx252-276. Although HTC requested an oral
`
`argument regarding the motion to dismiss, it was not provided. Appx46. Based on
`
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`the papers alone, the District Court instead held that every claim of the ‘941 Patent
`
`is directed to the “abstract concept of selecting a program, verifying whether the
`
`program is licensed, and acting on the program according to the verification.”
`
`Appx9. Although the District Court acknowledged that the claims further include a
`
`“requirement that the verification ‘key’ be placed as data within the BIOS memory,”
`
`the District Court disregarded this as nothing more than a “limitation of the
`
`invention” that does not make the “concept of the claims any less abstract.” Id. The
`
`District Court also held that the ‘941 Patent claims do not include an inventive
`
`concept. Appx10. The District Court therefore determined all claims of the ‘941
`
`patent to be unpatentable under § 101. Appx11.
`
`SUMMARY OF THE ARGUMENT
`The District Court erred in finding all claims of the ‘941 Patent to be invalid
`
`under 35 U.S.C. § 101, and committed reversible error.
`
`First, the District Court failed to consider that the specification of the ‘941
`
`Patent describes why the claims are directed to a technological improvement. See
`
`e.g., ’941 Patent at 3:4-17. This Court has repeatedly stated that the specification’s
`
`teachings are highly relevant under Alice step one. Visual Memory LLC v. NVIDIA
`
`Corp., 867 F.3d 1