Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Ancora,
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`v.
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`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
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`Defendants.
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`JURY TRIAL DEMANDED
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`ANCORA TECHNOLOGIES, INC.,
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`CIVIL ACTION NO. 1:20-cv-0034
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`Ancora,
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`v.
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`JURY TRIAL DEMANDED
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
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`Defendants.
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`DEFENDANTS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 2 of 24
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .............................................................................................................. 1
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`ARGUMENT ...................................................................................................................... 1
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`“using an agent to set up a verification structure in the erasable, non-
`volatile memory of the BIOS” ................................................................................ 1
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`“set up a verification structure” .............................................................................. 4
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`“memory of the BIOS” ........................................................................................... 8
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`“verifying the program using at least the verification structure” .......................... 11
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`“acting on the program according to the verification” .......................................... 12
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`“license”/“license record” ..................................................................................... 12
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`Order of Steps ...................................................................................................... 15
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`“BIOS” ................................................................................................................. 15
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`“selecting a program residing in the volatile memory” ....................................... 16
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`“program” ............................................................................................................. 17
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`“volatile memory” ................................................................................................. 17
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`“first non-volatile memory area of the computer” ............................................... 18
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`I.
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`J.
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`K.
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`L.
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`ii
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 3 of 24
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Akamai Techs., Inc. v. Limelight Networks, Inc.,
`805 F.3d 1368 (Fed. Cir. 2015)....................................................................................13, 15, 16
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`Ancora Techs., Inc. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014)............................................................................................12, 17
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`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018)..........................................................................................12, 13
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`Astrazeneca LP v. Apotex, Inc.,
`633 F.3d 1042 (Fed. Cir. 2010)................................................................................................10
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`Atmel Corp. v. Info. Storage Devices, Inc.,
`198 F.3d 1374 (Fed. Cir. 1999)..................................................................................................4
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`Digital Retail Apps, Inc. v. H-E-B,
`LP, 2020 WL 376664 (W.D. Tex. Jan. 23, 2020) ..............................................................2, 3, 4
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`Indacon, Inc. v. Facebook, Inc.,
`824 F.3d 1352 (Fed. Cir. 2016)..................................................................................................6
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`Nokia Sols. & Networks US LLC v. Huawei Techs. Co.,
`2017 WL 2226413 (E.D. Tex. May 19, 2017) .........................................................................16
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................3
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`Prowess, Inc. v. RaySearch Labs., AB,
`953 F. Supp. 2d 638 (D. Md. 2013) ...................................................................................16, 17
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..............................................................................................1, 3
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`Zeroclick, LLC v. Apple Inc.,
`891 F.3d 1003 (Fed. Cir. 2018)..............................................................................................1, 4
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`Statutes
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`35 U.S.C. § 112 ............................................................................................................................1, 4
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`iii
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 4 of 24
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`I.
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`INTRODUCTION
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`In its responsive brief, Ancora continues to advocate for positions that are in tension with
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`the ’941 Patent’s specification, the applicants’ statements to the USPTO, and the positions taken
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`by Ancora in related litigations and appeals. Notably, Ancora now relies on a confidential Beeble
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`White Paper from 2001, nearly three years after the patent was filed. Besides not being relevant to
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`a skilled artisan’s understanding at the time of the alleged invention, the Paper only undermines
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`Ancora’s positions and underscores that Defendants’ constructions are correct.
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`II. ARGUMENT
`A.
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`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS”
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`Relying primarily on Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018),
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`Ancora’s argument is premised on the idea that if the term “agent” is found to be software, the
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`limitation is no longer subject to 35 U.S.C. § 112, ¶ 6. Ancora’s argument is flawed in multiple
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`respects. First, as Defendants’ expert has opined, the term “agent” can connote software, hardware,
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`or a combination of hardware and software. Second, even if the term “agent” denotes software,
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`contrary to Ancora’s position, courts have not found that software alone categorically connotes
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`sufficient structure, particularly post-Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed.
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`Cir. 2015). (See Dkt. 45 at 7-8, n. 4.) Finally, even if the term “agent” connotes software, it cannot
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`indicate structure at the pertinent time because, as Ancora expressly admits, the claimed “agent”
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`was alleged to be novel and could not exist prior to the filing of the ’941 Patent. Unlike Zeroclick,
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`the claimed invention is not merely an update of an existing program that can signify structure.
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`The term “agent” is a nonce term and is not limited to software: Ancora’s argument is
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`premised on the assertion that the term “agent” connotes software, as opposed to hardware or a
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`combination of hardware and software. As explained by Defendants’ expert, a skilled artisan
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`1
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 5 of 24
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`would not arrive at such a conclusion. (Dkt. 45-1 at ¶¶ 54-55.) The Examiner did not, as Ancora
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`argues, state that “he understood ‘agent’ to be synonymous with a software ‘program.’” (Dkt. 50
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`at 3.) The Examiner merely identified certain programs as potential “agents.” (Dkt. 44-5 at
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`ANCORA_426-428.)
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`Ancora’s argument that Dr. Zadok’s research papers undermine his position that an “agent”
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`can be software or hardware is unavailing. (See Dkt. 50 at 6.) As Ancora acknowledges, Dr.
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`Zadok’s papers refer to “agent-daemons” and The Interposition Agents Toolkit. Both “daemon”
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`and “toolkit” have a well-known meaning in the art and both identify a specific type of software
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`to persons of skill. Zadok Supp. Decl. at ¶¶ 5-6. Thus, Dr. Zadok’s reliance on modifiers before
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`the term “agent” that point to specific software simply underscores his opinion that the term
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`“agent” alone can connote software or hardware. See id.at ¶¶ 5-8.1
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`In contrast, the term “agent” does not include any modifier in the claims of the ’941 Patent
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`and Ancora does not dispute that the term “agent” is ascribed different functions across claims 1
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`and 18. (Dkt. 50 at 8.) Ancora argues that “simpler claims require simpler disclosures,” suggesting
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`that the “agent” in claim 1 is somehow not a nonce word because it performs less tasks than in
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`claim 18. Id. But Ancora’s argument misses the point; by ascribing different roles to the “agent”
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`across the claims, the patent uses “agent” as a black box for generic hardware/software, confirming
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`its status as a nonce word.
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`Courts have not found that software alone categorically connotes sufficient structure:
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`Interpreting “agent” as a nonce word is consistent with the Court’s recent decision in Digital Retail
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`Apps, Inc. v. H-E-B, LP, 2020 WL 376664, at *5 (W.D. Tex. Jan. 23, 2020). Ancora argues that
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`1 Notably, Ancora neglects to identify a paper where Dr. Zadok expressly mentions “software
`agents,” which underscores that “software” must precede “agent” in order to clarify that the
`“agent” at issue is a software implementation. See id. at ¶ 7.
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`2
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 6 of 24
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`the term “agent” should be found to connote sufficient structure because the Court noted in Digital
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`Retail Apps that “software can serve as a corresponding structure.” (Dkt. 50 at 7.) Ancora
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`misinterprets the Court’s decision and conflates the two steps of the Williamson analysis. The
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`Court did not find that software generally connotes sufficient structure to avoid means-plus-
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`function claiming. Rather, the Court noted that software can serve as a “corresponding” structure
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`as part of the second prong of the means-plus-function analysis, i.e., after a term is found to be a
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`nonce word. Digital Retail Apps, 2020 WL 376644, at *6. Post-Williamson, many courts have
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`found terms like “software” do not to indicate sufficient structure. (See Dkt. 45 at 7-8, n. 4.)
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`The claimed agent was alleged to be novel and not known to skilled artisan at the time
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`of the alleged invention: Ancora’s responsive brief all but admits that the term “agent,” as used in
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`the ’941 Patent, would not have connoted sufficient structure to a skilled artisan at the time of the
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`alleged invention. To provide a description of an embodiment of the invention to the USPTO, the
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`only evidence the applicants were able to muster was a confidential White Paper (the “Beeble
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`White Paper” or the “Paper”) from 2001 authored by one of the inventors. (Dkt. 50 at 5.) Given
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`that the Beeble White Paper was from nearly three years after the ’941 Patent was filed, it should
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`not be considered when analyzing how a skilled artisan would have interpreted the term “agent”
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`at the time the ’941 Patent was filed. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
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`2005) (“[T]he ordinary and customary meaning of a claim term is the meaning that the term would
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`have to a person of ordinary skill in the art in question at the time of the invention.”).2
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`Nonetheless, the Beeble White Paper demonstrates that, even as of September 2001, the
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`“agent” was still being developed. As Ancora acknowledges, the paper explained that “‘[i]n order
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`for a user to access the BIOS EEPROM[,] proprietary software’ needed to be developed.” (Dkt.
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`2 Additionally, there is no evidence that inventors were persons of ordinary skill in the relevant
`time frame, as opposed to persons of extraordinary skill.
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`3
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 7 of 24
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`50 at 5.) The Paper demonstrates that the claimed “agent” stands in stark contrast to the claimed
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`invention examined in Zeroclick. Unlike the “existing” programs in Zeroclick, the Beeble White
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`Paper states that the Beeble system was “proprietary,” (Dkt. 50-2 at 3)3, “not commercially
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`available,” id. at 4, “next generation software licensing technology,” id. at 9. Similarly, to
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`overcome a § 101 challenge by HTC, Ancora previously emphasized that, while “HTC attempts
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`to justify consideration of only a small portion of claim 1 arguing that the ‘using an agent’
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`limitation merely uses software,” “such ‘software’ did not exist on generic computers.” Ex. 32
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`(Ancora Reply Brief in HTC CAFC) at 6. A skilled artisan at the time of the alleged invention,
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`nearly three years before the Beeble White Paper, would not have understood the term “agent” to
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`provide sufficient structure, given this context, but would have understood it to be a nonce word.
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`The corresponding structure is disclosed at 6:18-28: Ancora cannot rely on the Beeble
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`White Paper to augment the corresponding structure that “set[s] up a verification structure in the
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`erasable, non-volatile memory of the BIOS.” Notably, neither the Beeble White Paper nor its
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`details were incorporated into the specification, directly or by reference.4 Rather, the
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`corresponding structure for “set[ting] up a verification structure in the erasable, non-volatile
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`memory of the BIOS” is set forth at 6:18-28 of the ’941 Patent. (See Dkt. 45 at 10-11.) Defendants
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`have addressed Ancora’s “alternative disclosures” in their responsive brief. (Dkt. 49 at 7.)
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`B.
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`“set up a verification structure”
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`Ancora attempts to trivialize the disclosure in the specification and the applicants’
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`statements in the prosecution history by characterizing them as exemplary and non-limiting. But
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`3 Unless otherwise noted, any emphasis in this brief has been added.
`4 This raises questions as to whether the specification meets the enablement, written description,
`and best mode requirements of 35 U.S.C. § 112. Even if the Beeble White Paper had been
`incorporated by reference into the specification, the structure required by 35 U.S.C. § 112, ¶ 6
`cannot be supplied by the contents of a non-patent material cited in the specification. See Atmel
`Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999).
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`4
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 8 of 24
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`the intrinsic evidence consistently requires that the “verification structure” is set up by encrypting
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`a license record using a pseudo-unique key for each computer.
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`The specification and claims support Defendants’ construction: As Ancora
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`acknowledges, (Dkt. 50 at 10), the “Summary of the Invention” notes that “[t]he present invention
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`relates to a method of restricting software operation within a license limitation,” and explains that
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`“[t]his method strongly relies on the use of a key and of a record, which have been written into
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`the non-volatile memory of a computer.” ’941 Patent at 1:39-43. Thus, the patent is clear that “the
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`present invention” “strongly relies” on the use of “a key” unique to a “computer” for encryption.
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`Ancora argues that the Fig. 2 embodiment of the ’941 Patent dictates otherwise, because
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`“the specification expressly permits the ‘setting up’ step to be satisfied by actions other than
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`‘encrypting a license record using a pseudo-unique key,’ including ‘establishing or certifying the
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`existence of a pseudo unique key in the first non-volatile memory area.’” (Dkt. 50 at 10.) Ancora
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`mischaracterizes the specification. The specification states that step 18 of setting up the
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`verification structures includes the sub-steps of “establishing or certifying the existence of a
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`pseudo-unique key . . . and establishing at least one license-record location,” i.e., both sub-steps
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`are required. ’941 Patent at 6:18-22. The ’941 Patent is explicit that “[e]stablishing a license-record
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`includes the steps of . . . forming a license-record by encrypting of the contents used to form a
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`license-record with other predetermined data contents, using the key.” Id. at 6:23-26. Accordingly,
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`setting up the verification structure requires identifying a pseudo-unique key and using the pseudo-
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`unique key to create an encrypted license record for the computer.
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`Contrary to Ancora’s position, (Dkt. 50 at 11), the claims do not require a different result.
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`Defendants’ construction does not render the language of claim 8, “forming a license-record by
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`encrypting of the contents used to form a license-record with other predetermined data contents,
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`5
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 9 of 24
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`using the key,” superfluous. The doctrine of claim differentiation only requires that there be some
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`difference between the claims. Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1358 (Fed. Cir.
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`2016) (“[W]e have declined to apply the doctrine of claim differentiation where, as here, the claims
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`are not otherwise identical in scope.”). Defendants’ construction requires creating a license record
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`in claim 1 that contains information from or about the license. Claim 8 adds the limitation that the
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`license record is combined “with other predetermined data contents.”5 And even if Defendants’
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`construction did render all or a portion of claim 8 superfluous, claim differentiation is not a hard
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`and fast rule of construction and cannot be used to broaden claims beyond their correct scope as
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`set forth in the specification and the prosecution history. (See Dkt. 49 at 9.)6
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`The prosecution history supports Defendants’ construction: Here, the applicants were
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`clear during prosecution regarding the scope of their invention. The applicants overcame a
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`rejection based on the Ginter reference by arguing that the present invention sets up the verification
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`structure by using a pseudo-unique key to encrypt a license record. (See Dkt. 45 at 11-13; Dkt. 49
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`at 7-9.) Ancora argues that the applicants did not distinguish claim 1 over Ginter based on a lack
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`of disclosure in Ginter about encrypting a license record using a key because the Examiner did not
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`reject claim 1 on that ground. (Dkt. 50 at 12.) But Ancora cannot be correct because that rejection,
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`dated December 20, 2000, rejected claim 1 based on Ginter alone. (Dkt. 45-5 at 2.) And, as part of
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`its May 23, 2001 response, the applicants not only distinguished Ginter on the ground that it did
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`not disclose encrypting a license record using a key, but also amended claim 1 to make clear that
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`“the first non volatile memory accommodates data that includes [the] unique key.” Ex. 33 at
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`5 Use of “the” key in claim 8 means that the key must find antecedent basis. Claim 6 does not refer
`to any key. Thus, “the key” in claim 8 must be present in claim 1.
`6 Ancora does not allege an inconsistency between the language of claim 7 and Defendants’
`construction. The requirement that the agent “form[] a structure by encrypting a license record
`using a pseudo-unique key for each computer” originates from the proper construction of claim 1,
`upon which claim 7 depends.
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`6
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 10 of 24
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`ANCORA_347. The amendment highlights what the applicants thought differentiated their alleged
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`invention from Ginter’s, i.e., using a key unique to each computer to encrypt the license record.
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`Ancora tries to paint the applicants’ statements during prosecution as “equivocal.” (Dkt.
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`50 at 13.) They were not. The fact that the applicants noted that “[i]n a preferred embodiemt [sic],
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`a key resides in a first non-volatile part of a computer’s memory,” (Dkt. 45-6 at 5), does not weigh
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`against Defendants’ construction. The applicants were not, as Ancora suggests, articulating that “a
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`key” is used only in a preferred embodiment, but rather that, in a preferred embodiment, the key
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`is stored in a particular location, i.e., the a first non-volatile part of a computer’s memory.
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`Nor were the applicants’ limiting remarks directed to a particular embodiment, as Ancora
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`suggests. (Dkt. 50 at 12.) The fact that the applicants highlighted independent claim 20 as an
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`example in their response, (Dkt. 50 at 13), is of no import, as the applicants were simultaneously
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`trying to overcome the Examiner’s rejection of claim 1.
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`Rather, the applicants consistently described the “present invention” and “present method”
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`as encrypting a license record using a pseudo-unique key for each computer. (See Dkt. 45-6 at 8)
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`(“In the present invention, a unique key is stored in the first non-volatile memory of the
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`computer.”); Id. (“In the present method, the verification structure is formed by using a unique key
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`for each computer and license record information in the software.”); Id. at 9 (“In contrast to Ginter
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`et al., the present invention provides a system and method . . . that overcomes the problems with
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`the stationary object in Ginter et al.”). The Beeble White Paper also confirms that the inventors
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`were relying upon the same technique in the Beeble system. See Zadok Supp. Decl. at ¶ 11.
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`Finally, Ancora’s description of the language of the February 5, 2002 Response as
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`“inartfully” referring to the patentee’s simultaneous amendment of Claim 16 is made of whole
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`cloth. (Dkt. 50 at 13.) The applicants’ argument did not refer to claim 16, but rather stated that the
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`7
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 11 of 24
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`identification information of Ewertz “corresponds to the pseudo-unique key stored in the first non-
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`erasable, non-volatile memory as recited in claims 1 and 20.” (Dkt 45-10 at 4 (emphasis
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`modified).) Ancora provides nothing to support its re-writing of otherwise clear file history.
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`C.
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`“memory of the BIOS”
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`A key aspect of the purported invention is that it relies upon the “memory of the BIOS” in
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`a computer to store license data because the BIOS memory is more difficult to access and less
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`susceptible to tampering than any other memory in the computer. ’941 Patent at 3:4-17. The
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`applicants clarified during prosecution that BIOS memory was harder to access because it was not
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`recognized by the operating system as a storage device and lacked a file system. (See Dkt. 45 at
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`14-16.) Ancora now wants to discount those statements by portraying them as merely describing
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`shortcomings of prior art and not pertinent to the invention. (Dkt. 50 at 14-16.) Though the
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`statements by the applicants may have described the shortcomings of the BIOS modules available
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`at the time of the invention, the applicants adopted those BIOS modules in their invention without
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`any modification and burdened with those shortcomings. (See Dkt. 46 at 11-12.) Thus, the claims
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`are circumscribed by those limitations of the BIOS module.
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`The Beeble White Paper should not play any role in construing the claim. But the Paper is
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`informative because it confirms that the applicants were indeed employing BIOS modules in their
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`alleged invention that mirror Defendants’ proposed construction:
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`No support by OS: The Beeble White Paper confirms that operating systems at the time of
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`the invention—and even years later—did not support accessing BIOS modules. The Paper states
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`that “[u]nlike disk drives, access to BIOS is limited and not supported in operating systems” and
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`that proprietary software to access the BIOS EEPROM needed to developed as of 2001. (Dkt. 50-
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`2 at 4.) The Paper further asserts that “Beeble accesses . . . BIOS EEPROM through direct memory
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`read and write operations” and denigrates “[o]ther software licensing systems, which rely on
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`8
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 12 of 24
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`standard OS IO support to access the licensing information.” (Dkt. 50-2 at 4.) In short, the Beeble
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`system did not rely upon “standard OS IO support” to access BIOS memory because operating
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`systems did not support BIOS memory. See Zadok Supp. Decl. at ¶¶ 12-16.
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`No file system: The Beeble White Paper confirms that the BIOS modules used in the Beeble
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`system at the time did not have a file system under the generally accepted understanding of the
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`term. The paper mentions access to “Beeble licenses in EEPROM . . . is achieved by a ‘Beeble
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`File System’ component.” (Dkt. 50-2 at 7.) Use of quotes around the phrase “Beeble File System”
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`itself implies that it is not a file system. The remainder of the section confirms that the term “Beeble
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`File System” is a misnomer because it lacks the functionality present in file systems that were
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`generally available when the ’941 Patent was filed. See Zadok Supp. Decl. at ¶¶ 17-18.
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`Use of BIOS EEPROM: The Paper confirms the applicants relied exclusively on BIOS
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`memory, and not any other memory, to store license data: “Access to the BIOS EEPROM (where
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`BXL licenses are stored) is not trivial, requires thought and effort.” (Dkt. 50-2 at 4.) Using other
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`memory, such as a hard disk, that was trivial to access would eviscerate the benefit of the alleged
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`invention.7 The Paper contradicts Ancora’s current assertion that the claims encompass any
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`memory that is somehow “associated” with BIOS.8 See Zadok Supp. Decl. at ¶ 13.
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`Thus, when the applicants identified the shortcomings of BIOS modules to USPTO in
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`February 2002 response, they were not merely identifying shortcomings of other prior art. Instead,
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`7 To argue that “memory of the BIOS” cannot store the BIOS software, Ancora mischaracterizes
`Defendants’ positon. (Dkt. 50 at 16.) As Defendants clarified earlier, the “memory of the BIOS”
`can contain a ROM portion and an EEPROM portion. The ROM portion contains the BIOS
`software that is installed by the computer vendor during manufacturing. The “agent” can store the
`encrypted verification structure in the EEPROM. (Dkt. 49 at 30.)
`8 Ancora cites to several cases to argue that disclaimer does not apply when an applicant describes
`the features of prior art. (Dkt. 14 at 14.) Such cases are irrelevant because the applicants have
`admitted that they were using a “standard component on the motherboard” and “already-existing
`memory in which the BIOS was stored.” (Dkt. 49 at 11-12.) The Paper further affirms that.
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`9
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 13 of 24
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`they were referring to BIOS modules that were part of their invention and were being
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`contemporaneously employed in the Beeble system, as described in the Beeble White Paper, dated
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`September 2001. Thus, the applicants correctly represented to the USPTO, in contrast to Ancora’s
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`argument now, that their invention relied upon BIOS modules that were not supported by an
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`operating system and that lacked a file system.9
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`Finally, Ancora creates a strawman to argue that Defendants’ construction would render
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`the invention inoperable because it would not be possible for an “OS-level software agent” to set
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`up a verification structure in the BIOS memory that was burdened by the shortcomings identified
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`by the applicants during prosecution. (Dkt. 50 at 15.) Contrary to Ancora’s assertion, the Paper
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`demonstrates that the Beeble system accessed the BIOS module using vendor-provided interfaces
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`without ever invoking “OS-level” functionality.10 See Zadok Supp. Decl. at ¶ 19. When describing
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`the functionality of “Kernel mode Driver,” a construct that allegedly corresponds to the claimed
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`“agent,” the Paper states that a “driver-level implementation allows Beeble direct access to the
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`BIOS EEPROM needed to store licenses.” (Dkt. 50-2 at 7.) Because a “driver-level
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`implementation” does not connote OS-level operation, the BIOS modules could be accessed at the
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`time the invention without resorting to OS-level programs. See Zadok Supp. Decl. at ¶¶ 15, 19.
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`Ancora’s argument rests on the mistaken assumption that the “agent” must operate only at
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`9 This is also consistent with the Examiner’s understanding that the “agent” provided access to the
`BIOS memory that the OS-level programs could not access. (Dkt. 45 at 17.) The Examiner did not
`characterize “agent” as an OS-level entity. Ancora blatantly edits Examiner’s statements and
`inserts “[OS-level software]” without any justification. (Dkt. 50 at 16.)
`10 Ancora’s reliance on Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010) is to no
`avail. (Dkt. 50 at 15.) The Beeble White Paper demonstrates that the alleged invention can
`operate with BIOS modules that are not seen as storage devices by the OS and lack a file system.
`Astrazeneca relied on unrebutted expert testimony from the plaintiff stating that the claimed
`invention would be inoperable under the defendant’s construction. Id. at 1053, n1. Here, Mr.
`Jestice has not offered such an opinion whereas Defendants’ expert has explained that the alleged
`invention can operate without resorting to the operating system. See Zadok Supp. Decl. at ¶ 19.
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`10
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 14 of 24
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`the OS-level. The Paper demonstrates that the applicants did not consider the “agent” to be an
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`“OS-level software,” but viewed the Beeble “agent” as a “driver-level implementation” that
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`operates outside the traditional operating system.11 See Zadok Supp. Decl. at ¶ 15. In fact, the
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`applicants believed that one of the benefits of using the Beeble system was that it did not rely upon
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`standard OS IO support. (Dkt. 50-2 at 4.) Thus, Ancora’s argument that the term “agent” was
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`added to connote exclusive “OS-level” operation contradicts how the applicants viewed their
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`invention. Notably, Ancora does not cite to any explicit statements by the applicants to that effect.
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`The Beeble White Paper explains why.12 See Zadok Supp. Decl. at ¶¶ 15, 19.
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`D.
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`“verifying the program using at least the verification structure”
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`During prosecution, the applicants unequivocally stated that “[s]oftware license
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`management applications, such as the one of the present invention, are operating system level
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`programs.” (Dkt. 45-10 at 5.) Ancora argues that Defendants have taken this statement “out of
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`context” to argue that the claimed steps of the invention operate at the OS-level. (Dkt. 50 at 17.)
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`But Ancora previously argued to the Federal Circuit that this exact statement means precisely what
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`Defendants say it means. (See Dkt. 49 at 15 (citing Dkt. 49-5 at 17).) And the specification
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`confirms this understanding, noting that a “license verifier application, that is a priori running in
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`the computer,” performs the verification of a license. ’941 Patent at 2:12-19. Ancora’s newfound
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`11 Though each step of claim 1 is performed at the OS-level, the “agent” itself operates outside of
`the operating system. An OS-level application, while operating at the OS-level, can invoke the
`claimed “agent” to access BIOS memory. The “agent” performs its claimed function without
`invoking OS-level functionality. Zadok Supp. Decl. at ¶ 19. The Beeble system mirrors that.
`12 Ancora has yet to produce transcripts of Mr. Mullor’s depositions in prior litigations. Excerpts
`of Mr. Mullor’s deposition from the Apple Litigation were attached as Ex. 1007 to a petition for
`CBM review filed with the PTAB by HTC. Review of the transcript further indicates Ancora’s
`litigation positions diverge from Mr. Mullor’s prior testimony: Mr. Mullor does not recollect what
`transpired in the meeting with the Examiner, (Ex. 34 pp. 35-37); does not recollect who came up
`with idea to add agent to the claims (Id., pp. 16-17); admitted he was not the first person to invent
`BIOS (Id., pp. 19-20); and discussed how Beeble accessed BIOS memory using the DMI
`specification without mentioning use of operating system (Id., pp. 26-28).
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`11
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`Case 1:20-cv-00034-ADA Document 52 Filed 04/27/20 Page 15 of 24
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`argument that “the patentee used the term ‘agent’ to mark when an OS-level program/application
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`was required,” (Dkt. 50 at 17), has no support in the patent or the prosecution history, and instead
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`directly contradicts Ancora’s previous arguments to the Federal Circuit. (See Dkt. 49 at 14-16.)
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`E.
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` “acting on the program according to the verification”
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`Ancora improperly seeks to avoid the limitations imposed on the “acting” step by the
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`intrinsic evidence. First, Ancora argues that the scope of the “acting” limitation is not based on
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`whether a program is “licensed” or “not licensed.” (Dkt. 50 at 19.) But the claim language shows,
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`and Ancora agrees, that the “acting” step relies upon “the verification” performed in the
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`“verifying” step, (Dkt. 50 at 24, n.6), which Ancora further agrees includes “confirming whether
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`a program is licensed.” Id. at 17. Second, Ancora argues that construing the “acting” step to mean
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`“allowing” or “restricting” a program’s use is inconsistent with the specification, but these precise
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`terms are employed in the specification, which (1) states that “[a]cting (20) on the program
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`includes