`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`
`
`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
`
`Defendants.
`
`
`v.
`
`
`
`CIVIL ACTION NO. 1:20-CV-0034
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`CIVIL ACTION NO. 1:20-CV-0034
`
`
`JURY TRIAL DEMANDED
`
`
`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 1 of 21
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`ANCORA TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`v.
`
`
`Defendants.
`
`
`
`
`
`PLAINTIFF’S REPLY CLAIM CONSTRUCTION BRIEF
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 2 of 21
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`TABLE OF CONTENTS
`
`“license” (Claim 1 - Preamble) / “license record” ...............................................................1
`
`“volatile memory” ................................................................................................................3
`
`“BIOS” .................................................................................................................................4
`
`“non-volatile memory of the BIOS” ....................................................................................4
`
`i)
`
`The Court Should Reject Defendants’ “Not Recognized by an Operating
`System as a Storage Device” and “Does Not Have a File System”
`Limitations ..............................................................................................................5
`
`ii)
`
`Defendants’ “Memory That Stores the BIOS” Construction Is Wrong ...................7
`
`“program” ............................................................................................................................7
`
`“selecting a program residing in the volatile memory” .......................................................8
`
`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS” ..........................................................................................................8
`
`“set up a verification structure” .........................................................................................11
`
`“verifying the program using at least the verification structure” .......................................12
`
`“acting on the program according to the verification” .......................................................14
`
`The Order of the Claim 1 Steps .........................................................................................15
`
`“first non-volatile memory area of the computer” .............................................................15
`
`
`
`
`
`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 3 of 21
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011)................................................................................................13
`
`AGIS Software Dev., LLC v. Huawei Device USA Inc.,
`2018 WL 4908169 (E.D. Tex. Oct. 10, 2018) .........................................................................10
`
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003)................................................................................................15
`
`Am. Med. Sys., Inc. v. Biolitec, Inc.,
`618 F.3d 1354 (Fed. Cir. 2010)..................................................................................................2
`
`Ancora Techs., Inc. v. Apple Inc. (“Apple I”),
`2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) ...........................................................................3
`
`Ancora Techs., Inc. v. Apple, Inc. (“Apple II”),
`744 F.3d 732 (Fed. Cir. 2014).......................................................................................... passim
`
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018)........................................................................................6, 7, 14
`
`Avid Tech., Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016)........................................................................................1, 7, 12
`
`Bedrock Computer Techs., LLC v. Softlayer Techs., Inc.,
`2011 WL 91089 (E.D. Tex. Jan. 10, 2011) ..............................................................................15
`
`Digital Retail Apps, Inc. v. H-E-B, LP,
`2020 WL 376664 (W.D. Tex. Jan. 23, 2020) ......................................................................9, 10
`
`Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc.,
`946 F.3d 1367 (Fed. Cir. 2020)..................................................................................................8
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016)..................................................................................................2
`
`Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n,
`383 F.3d 1352 (Fed. Cir. 2004)..................................................................................................6
`
`Genband USA v. Metaswitch Networks,
`2015 WL 4722185 (E.D. Tex. Aug. 7, 2015) ............................................................................9
`
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`ii
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 4 of 21
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`
`
`Haemonetics Corp. v. Baxter Healthcare Corp.,
`607 F.3d 776 (Fed. Cir. 2010)............................................................................................11, 15
`
`Indivior Inc. v. Dr. Reddy’s Labs., S.A.,
`930 F.3d 1325 (Fed. Cir. 2019)..................................................................................................5
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999)................................................................................................11
`
`Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
`790 F.3d 1298 (Fed. Cir. 2015)................................................................................................15
`
`Laryngeal Mask Co. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010)................................................................................................12
`
`Mass. Inst. of Tech. v. Shire Pharm., Inc.,
`839 F.3d 1111 (Fed. Cir. 2016)..................................................................................................7
`
`SanDisk Corp. v. Memorex Prod., Inc.,
`415 F.3d 1278 (Fed. Cir. 2005)..................................................................................................7
`
`Sci. Telecommc’ns, LLC v. Adtran, Inc.,
`2016 WL 6872311 (D. Del. Nov. 21, 2016) ............................................................................10
`
`SecurityProfiling, LLC v. Trend Micro Am., Inc.,
`2018 WL 4585279 (N.D. Tex. Sept. 25, 2018)........................................................................10
`
`Texas Digital Sys., Inc. v. Telegenix, Inc.,
`308 F.3d 1193 (Fed. Cir. 2002)..............................................................................................2, 9
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015)..................................................................................................1
`
`Xerox Corp. v. Google Inc.,
`801 F. Supp. 2d 293 (D. Del. 2011) .........................................................................................15
`
`Zeroclick, LLC v. Apple Inc.,
`891 F.3d 1003 (Fed. Cir. 2018)............................................................................................9, 10
`
`Statutes
`
`35 U.S.C. § 112 ..........................................................................................................................9, 10
`
`
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 5 of 21
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`Defendants’ Response (Dkt. 49) proves Ancora’s point: Defendants’ positions are not
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`supported by the claims or the specification. Instead, Defendants rely on snippets from the
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`prosecution history and other litigations as the main and often only basis for their constructions.
`
`None support Defendants’ positions—much less satisfy the “high” standard required to show
`
`“patentee disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016).
`
`Defendants thus turn to rhetoric—accusing Ancora of a variety of purported misconduct,
`
`including walking away from positions taken in prior litigations. The accusations are baseless. As
`
`Defendants know, Ancora changed a construction only when (1) a court subsequently construed a
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`term or (2) Defendants told Ancora they understood it to be narrower than Ancora had explained.
`
`Ancora further addresses these issues (as well as the other shortcomings in Defendants’
`
`constructions) below—again discussing the terms in the order in which they appear in the claims.
`
`“license” (Claim 1 - Preamble) / “license record”
`
`1.
`“License” Does Not Need to Be Construed: As Ancora explained in its Opening Brief at
`
`page 5 and its Response at page 20, the portion of the preamble containing the word “license”
`
`describes an intended use or purpose for the structurally complete invention described in the claim
`
`body. It thus is not limiting, and the word “license” needs no construction. TomTom, Inc. v. Adolph,
`
`790 F.3d 1315, 1324 (Fed. Cir. 2015) (portion of preamble stating an intended use is non-limiting).
`
`Notably, Defendants do not dispute that Claim 1 recites a structurally complete invention.
`
`Instead, they argue the preamble is limiting because “license” purportedly “provides required
`
`antecedent basis” for terms like “license record” and “license authentication bureau” and because
`
`a proposed construction uses the word “licensed.” Defs. Resp. at 20 & n.8. Defendants are wrong.
`
`Certainly, Defendants cite nothing to support their argument that use of a similar word in
`
`a proposed construction is enough to render a preamble limiting. Nor can they. The very case
`
`Defendants cite shows that reference to even identical words in a later claim is not enough to justify
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 6 of 21
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`
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`antecedent basis treatment. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir.
`
`2010) (holding that “the preamble term ‘photoselective vaporization of tissue’ does not provide a
`
`necessary antecedent basis for the term ‘the tissue’ in the bodies of each” claim). Similarly, not
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`one of the “almost 30 phrases” Defendants point to start with the words “said” or even “the”—
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`further demonstrating that none actually refer back to the word “license” in the Claim 1 preamble.
`
`Defendants’ “License” Construction Contradicts the Specification: Even if the term
`
`“license” were limiting, Defendants’ construction would be incorrect.
`
`First, it is inconsistent with the specification, which teaches that—as used in the ’941
`
`Patent—a “license” refers to “authorization or verification to run.” Ancora Br. at 6 (citing ’941
`
`Patent at 1:6-8, 1:59-62, and 2:14-26).1 Indeed, the fact that Defendants have to leap immediately
`
`to dictionary definitions shows the weakness of their argument. Even ignoring that—as Ancora
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`explained at page 22 of its Response—Defendants’ dictionaries show “there is not a single,
`
`accepted meaning” of the word “license,” “the question is not whether there is a settled ordinary
`
`meaning of the term[] in some abstract sense.” Eon Corp. IP Holdings v. Silver Spring Networks,
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`815 F.3d 1314, 1320 (Fed. Cir. 2016). “The only meaning that matters . . . is the meaning in the
`
`context of the patent.” Id. And here, the specification consistently uses “license” to refer to a
`
`program’s authorization or verification to run—a concept broader than a “legal contract.” Texas
`
`Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002) (“If more than one
`
`dictionary definition” is consistent with the intrinsic record, the construction must include each.).
`
`Second, Defendants’ argument that the “concept of ‘verification’ is at odds with the
`
`concept of ‘license’” also is incorrect. Defs. Resp. 21-22. Defendants ignore that the specification
`
`uses the words “licensed” and “verified” interchangeably. E.g., ’941 Patent at 1:54 (“licensed to
`
`
`1 Unless otherwise noted, all emphasis in this brief has been added.
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 7 of 21
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`run”), 1:61 (same), 2:20 (“verified to run”), 2:30 (same). Defendants also ignore that, during
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`prosecution, the patentee said that its method includes at least “a process where a software program
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`verifies its authenticity using a license (verification structure).” Ancora Ex. 24 at ANCORA_342.
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`Finally, Defendants’ “unique key” argument also is wrong. To the extent a key is required
`
`at all, many of the asserted claims expressly contemplate that a “pseudo-unique key” suffices.
`
`Defendants’ Unsupported “License Record” Construction Is Wrong: Defendants cite
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`nothing in either of their briefs to support their “is licensed” limitation. Nor do Defendants respond
`
`to the fact that—as the Apple I court found—Ancora’s “for verifying that licensed program”
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`construction is the correct one. Ancora Techs., Inc. v. Apple Inc., 2012 WL 6738761, at *12 (N.D.
`
`Cal. Dec. 31, 2012) (“Apple I”); Ancora Resp. at 22-23. Defendants do not even address the
`
`patentees’ explanation that the claimed method includes “a process where a software program
`
`verifies its authenticity using a license (verification structure).” Ancora Ex. 24 at ANCORA_342.
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`“volatile memory”
`
`2.
`In support of their construction, Defendants accuse Ancora of “playing fast and loose with
`
`this court.” Defs. Resp. at 29. The accusation is baseless. As explained in Ancora’s Opening Brief
`
`at page 8, the Federal Circuit held that—as used in the ’941 Patent—“volatile memory” includes
`
`both “memory whose data is not maintained when the power is removed” and situations where
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`memory “become[s] inaccessible through the usual means once power is removed (even if the data
`
`can still be found on the hard disk by more sophisticated means).” Ancora Techs., Inc. v. Apple,
`
`Inc., 744 F.3d 732, 737 (Fed. Cir. 2014) (Apple II) (citing ’941 Patent at 4:53-54, 8:1-2).
`
`Defendants know this. Defendants also know that Ancora amended their construction in
`
`this case because—unlike other defendants—Defendants said they understood Ancora’s prior
`
`construction would exclude the very “inaccessible” example the Federal Circuit had identified.
`
`Finally, and to be clear, Defendants’ offer to “include[e] virtual RAM” in its construction
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 8 of 21
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`is not enough. The phrase “virtual RAM” suggests that RAM is required even though “virtual
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`memory” refers to a technique of using non-volatile memory (including a computer’s hard disk)
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`in a volatile way. See Ancora Ex. 25 (MICROSOFT COMP. DICTIONARY (5th ed.) (defining “virtual
`
`memory” as memory that “may be partially simulated by secondary storage such as a hard disk”).
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`“BIOS”
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`3.
`Defendants’ Argument Refutes Their “Stored in ROM” Limitation: As an initial matter,
`
`Defendants admit that Ancora is correct: “BIOS memory” is not limited to being stored in ROM.
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`Defs. Resp. at 24-25. Instead, they argue that “BIOS” somehow refers to “BIOS instructions,”
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`which they say must be stored in ROM. Id. The argument is baseless.
`
`Claim 1 refers only to “memory area of a BIOS” or “memory of the BIOS.” It never refers
`
`to BIOS “instructions.” Further, to the extent the patent discloses anything akin to BIOS
`
`“instructions,” it teaches that they may be changed, which cannot be true if they are stored only in
`
`ROM. ’941 Patent at 3:10-13 (noting consequences of data residing in the BIOS (which is
`
`necessary for the computer’s operability) [being] inadvertently changed”)).
`
`Defendants also cite nothing to support their statement that “Ancora does not dispute that
`
`there is a ROM portion of the BIOS memory.” In reality, Ancora noted embodiments “having only
`
`one non-volatile memory,” which necessarily means it is not limited to ROM. Id. at 3:23-25.
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`Further, nothing in Claim 1 requires a “unique key”—a limitation described in dependent claims.
`
`Defendants Admit Their “Automatically” Limitation Is Wrong: In their response,
`
`Defendants admit (as they must) that BIOS “can also be run manually if a user desires.” Defs.
`
`Resp. 25 (emphasis in original). Their attempt to limit the ’941 Patent BIOS to running
`
`“automatically” thus is plainly incorrect and should be rejected.
`
`“non-volatile memory of the BIOS”
`
`4.
`As Ancora explained on pages 12-14 of its Opening Brief, the Federal Circuit understood
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 9 of 21
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`that “non-volatile memory of [a/the] BIOS” simply refers to “memory space associated with the
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`computer’s basic input/output system (BIOS), rather than other memory space.” Apple II, 744 F.3d
`
`at 733. The Examiner shared that understanding. “During examination, the Examiner defined
`
`‘BIOS’ as “the set of essential software routines that test hardware at startup, start the operating
`
`system, and support the transfer of data among hardware devices.” Defs. Ex. 28 at 5.
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`In contrast, Defendants ask the Court to limit the claims to the very prior art shortcomings
`
`the patent was invented to overcome—shortcomings that would lead to the absurd result of the
`
`invention not being able to “[s]et up a verification structure in the erasable, non-volatile memory
`
`of the BIOS” as Claim 1 expressly requires. Such a “nonsensical interpretation” is incorrect and
`
`must be rejected. Indivior Inc. v. Dr. Reddy’s Labs., S.A., 930 F.3d 1325, 1343 (Fed. Cir. 2019).
`
`i) The Court Should Reject Defendants’ “Not Recognized by an Operating
`System as a Storage Device” and “Does Not Have a File System” Limitations.
`
`Defendants’ first argument depends on their mischaracterization of the prosecution history,
`
`which they argue contains “the applicants’ representations regarding the shortcomings of the
`
`standard BIOS memory used in the invention.” Defs. Resp. 11-12. Defendants are wrong. As the
`
`below text shows, the patentee only was describing the prior art limitations that had precluded OS-
`
`level programmers from being motivated to develop software to write to the BIOS:
`
`An ordinary person skilled in the art makes use of OS features to write date to
`storage mediums. There is no OS support whatsoever to write data to the system
`BIOS. Therefore, an ordinary person skilled in the art would not consider the BIOS
`as a possible storage medium. Furthermore, it is common that all peripheral devices
`in the PC are listed and recognized by the OS except for the BIOS . . . .
`Second, no file system is associated with BIOS. Every writable device
`connected to the PC is associated with an OS file system to arrange and manage
`data structures. An example for such a file system would be FAT, FAT32, N1FS,
`HPFS, etc. that suggests writing data to the writable device. No such file system is
`associated with the BIOS. This is further evidence that OS level application
`programmers would not consider the BIOS as a storage medium.
`
`Ancora Ex. 3 at ANCORA_438. Specifically, in the prior art, (1) there was “no OS support” to
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`write data to BIOS and (2) there was no “OS file system . . . associated with BIOS.”2 Id.
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`In contrast, the patentee said that the invention “proceeds against conventional wisdom in
`
`the art” by doing the opposite: “[u]sing BIOS to store application data.” Id.; Ancora Techs., Inc. v.
`
`HTC Am., Inc., 908 F.3d 1343, 1350 (Fed. Cir. 2018) (“HTC”) (“the record . . . shows that the
`
`claimed invention moves a software-verification structure to a BIOS location”). Indeed, the Beeble
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`White Paper submitted during prosecution as an exemplary embodiment describes a utility that
`
`recognized the BIOS and maintained a file system in it. Ancora Ex. 18 at ANCORA_278.
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`
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`Defendants’ construction would preclude any of this from occurring. It would result in the
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`nonsensical outcome where the OS agent could not carry out its express Claim 1 function of
`
`“[s]et[ting] up a verification structure in the erasable, non-volatile memory of the BIOS”—
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`something Defendants admit could not be done if their limitations were adopted. Defs. Br. at 17.
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`And, to be clear, Mr. Mullor said nothing to the contrary. The testimony Defendants quote
`
`at pages 11-12 shows only that the invention was not focused on changing BIOS “hardware.”
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`Instead, it taught a “software” solution that improves “this already available hardware” by enabling
`
`BIOS to be recognized—and used—by OS-level software agents (like the Beeble product) to store
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`data. E.g., Ex. 27 (Mullor Tr.) at A1825 (“Our idea essentially is -- was to build a software
`
`licensing technology that combines this already available hardware with software that we will
`
`develop, and create an elegant solution that has the advantages with none of the disadvantages.”).
`
`In short, at most, the patentee simply identified prior art limitations, which “do[es] not
`
`indicate a disavowal or disclaimer of claim scope.” Gemstar-TV Guide Int’l, Inc. v. Int’l Trade
`
`
`2 Also incorrect is Defendants’ representation “that the Examiner stated that Misra and Ewertz
`collectively disclosed storing license records in BIOS memory.” Defs. Resp. at 11. The Examiner
`stated the opposite—emphasizing that he was allowing the ’941 Patent precisely because “the
`closest prior art systems, singly or collectively, do not teach licensed programs running at the OS
`level” interacting with BIOS. Ancora Ex. 2 (Examiner’s Reason for Allowance) at ANCORA_451.
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 11 of 21
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`
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`Comm’n, 383 F.3d 1352, 1375 (Fed. Cir. 2004) (“Gemstar’s statements in the prosecution history
`
`do not indicate a disavowal or disclaimer of claim scope, but merely provide an example to
`
`illustrate differences between the invention and the prior art.” (citation omitted)); Avid Tech., 812
`
`F.3d at 1046-47; Mass. Inst. of Tech. v. Shire Pharm., Inc., 839 F.3d 1111, 1120 (Fed. Cir. 2016).
`
`ii) Defendants’ “Memory That Stores the BIOS” Construction Is Wrong.
`
`Defendants’ second argument is a red herring. Ancora does not dispute that the invention
`
`requires that a verification structure be stored in the “non-volatile memory of the BIOS” (i.e.,
`
`memory associated with the BIOS such that BIOS operations are able to recognize and use it).3
`
`What Ancora seeks to avoid is the trap that Defendants are laying: one where “memory of
`
`the BIOS” is limited to “memory that stores [BIOS] software.” Defs. Resp. 12. Such a requirement
`
`conflicts with the specification, which teaches that the verification structure may be established in
`
`a different BIOS memory area than the BIOS software. ’941 Patent at 1:39-2:12 (teaching how, in
`
`one “non-limiting example” embodiment, the BIOS software is stored in a first BIOS memory area
`
`while the verification structure is stored in a second BIOS memory area); id. at 6:18-21.
`
`Given such statements, it is not surprising that Defendants cite nothing in the specification
`
`or claims to support their construction. And Ancora never said anything different in other
`
`litigation. In HTC, for example, the “specific storage location” Ancora identified was the “erasable,
`
`non-volatile memory of BIOS”—the same memory Ancora is pointing to now. Defs. Ex. 29 at 39.
`
`“program”
`
`5.
`The dispute regarding this term is simple. Defendants accuse Ancora of “overreaching”
`
`and trying to “expand the scope of the claim” simply by adopting the Federal Circuit’s construction
`
`
`3 Though irrelevant here, only a finding of judicial estoppel binds a patentee to a prior litigation
`statement. And estoppel does not apply where the prior court “did not explicitly construe” the term
`at issue. SanDisk Corp. v. Memorex Prod., Inc., 415 F.3d 1278, 1291 (Fed. Cir. 2005).
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`Case 1:20-cv-00034-ADA Document 53 Filed 04/27/20 Page 12 of 21
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`
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`of this term. Defendants are wrong. In reviewing this term, the Federal Circuit explicitly
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`considered the “can be executed” limitation and removed it—holding that the “clear meaning” of
`
`this term was “a set of instructions for a computer.” Apple II, 744 F.3d at 734-35, 737.
`
`“selecting a program residing in the volatile memory”
`
`6.
`Defendants do not cite a single piece of intrinsic evidence to support their “running a
`
`program . . .” construction. Instead, they point solely to the fact that Ancora proposed the
`
`construction in a prior case. But Ancora explained in that very litigation that its construction
`
`required only that a single program be “loaded into memory for execution.” Ancora Ex. 15 at 16.
`
`Defendants’ remaining arguments also are wrong. Defs. Resp. 25-26. Defendants do not
`
`dispute that their construction is inconsistent with at least one embodiment of the patent—reason
`
`enough to reject it. Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367,
`
`1373 (Fed. Cir. 2020) (rejecting construction that “would exclude such a preferred embodiment”).
`
`Further, Defendants’ “establishing” and/or “loading” argument ignores that the claims and
`
`specification identify each as examples of what “selecting” can include. ’941 Patent at 2:10-26
`
`(stating that selecting can include “loading” and “accessing”), 6:7-10 (stating that, “according to
`
`one embodiment of the invention,” “[s]electing (17) a program includes the step of: establishing a
`
`licensed-software-program in the volatile memory”). Indeed, during prosecution, the Examiner
`
`found that a POSITA would understand “selecting a program” to be satisfied by art reciting loading
`
`“code to be executed” or “stor[ing] instructions for execution.” Defs. Ex. 5 at ANCORA_357.
`
`7.
`
`“using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS”
`
`To support their means-plus-function argument, Defendants try to portray Ancora as
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`having represented “agent” to be a previously unknown concept. Defendants are wrong. “Agent”
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`had an established meaning as a “software program or routine.” What was novel was the tasks the
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`Ancora “agent” was programmed to perform. And because the intrinsic record details the agent’s
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`structure and how it can accomplish such tasks, “agent” does not invoke § 112 ¶ 6.
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`“Agent” Is Not a Nonce Word: To support their argument, Defendants rely heavily on the
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`fact that one dictionary says an “agent” “may be software, hardware, or both.” Defs. Resp. 3. But
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`the Federal Circuit has made clear that dictionary definitions are relevant only to the extent they
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`are “consistent with the use of the words in the intrinsic record.” Texas Digital, 308 F.3d at 1204;
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`see Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (looking to intrinsic record).
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`And here, that record confirms that “agent” is a “software program or routine.” The
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`Examiner and the patentee expressly understood “agent” to mean software. See Ancora Resp. 5-6.
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`The Federal Circuit likewise described the invention as “a piece of software,” Apple II, 744 F.3d
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`at 735. And Defendants themselves identify multiple statements in which the inventor confirmed
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`that the patent is directed to “software”—not hardware. Defs. Resp. 11-12.
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`Defendants also flip the § 112 ¶ 6 inquiry on its head by arguing that the E2PROM
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`manipulation commands—which illustrate how the “agent” can write data to BIOS—“are not an
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`algorithm.” Defs. Resp. 4. But as this Court held, the search for an algorithm occurs only if the
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`presumption against § 112 ¶ 6 is overcome. Digital Retail Apps, Inc. v. H-E-B, LP, 2020 WL
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`376664, at *3 (W.D. Tex. Jan. 23, 2020). Indeed, Genband USA v. Metaswitch Networks rejected
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`the same argument, explaining the “issue [that] arises only if a term is found to be a means-plus-
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`function term.” 2015 WL 4722185, at *17 (E.D. Tex. Aug. 7, 2015).
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`Tellingly, Defendants now abandon their prior reliance on Genband, which they previously
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`cited as an example of an “agent” “connot[ing] sufficient structure” because “the claims and
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`specification explained how the ‘agent’ interacted with other components in a way that informed
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`its structural character.” Defs. Br. 8 n.3. The ’941 Patent does the same. It describes how its agent
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`interacts with other components (like BIOS), including how it can use specific E2PROM
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`manipulation commands to accomplish its task. ’941 Patent at 1:59-2:26, 5:9-6:52; see Ancora
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`Resp. 5-6. Such descriptions show that “the presumption [against § 112 ¶ 6] stands.” Digital Retail,
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`2020 WL 376664, at *2 (finding that the term “first communication module” was a means-plus-
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`function term where the specification did not disclose “how the software performs the functions”).4
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`Defendants also fail to distinguish Zeroclick and SecurityProfiling. Just like in Zeroclick,
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`the ’941 patent is directed to improving existing software—known structure. Further, similar to
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`SecurityProfiling, the consistent dictionary definitions and the research of Defendants’ expert
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`show that, “to one skilled in the art, [agent] would suggest any one of several well-known
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`structures.” Defs. Resp. 6 (quoting SecurityProfiling, LLC v. Trend Micro Am., Inc., 2018 WL
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`4585279 at *3 (N.D. Tex. Sept. 25, 2018)). Nothing more is required.5
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`Finally, Defendants try to immunize themselves from their admission that the specification
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`recites algorithms for the “agent,” arguing that such algorithms cannot rebut the presumption
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`against § 112 ¶ 6, otherwise “means-plus-function claiming” would be “impossible.” Defs. Resp.
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`6. But courts can and do use algorithms to defeat assertions of means-plus-function claiming. See
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`Sci. Telecommc’ns, LLC v. Adtran, Inc., 2016 WL 6872311, at *3 n.16 (D. Del. Nov. 21, 2016)
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`(“[T]he disclosed algorithm is sufficiently definite structure, and § 112, ¶ 6 does not apply.”). To
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`hold any different would render all software patents subject to § 112, ¶ 6. Defendants’ admission
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`that the specification contains such an algorithm thus preserves the presumption. See id. (noting
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`4 Ancora notes that—contrary to what Defendants represent—this Court did not address E2PROM
`manipulation commands in its Digital Retail decision, much less find they were not algorithms.
`5 Also incorrect is Defendants’ dismissal of Ancora’s pre-Williamson cases finding that “software”
`and “code” connote structure. Eolas and Aloft “did not utilize the pre-Williamson ‘strong’
`presumption.” AGIS Software Dev., LLC v. Huawei Device USA Inc., No. 2:17-CV-513-JRG, 2018
`WL 4908169, at *18 (E.D. Tex. Oct. 10, 2018) (relying on pre-Williamson case). Further, each
`case plainly found that software can connote structure.
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`Defendants’ failure to show “algorithm [was not] sufficiently definite structure”).
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`Defendants’ Structure Is Incomplete: Even if § 112 ¶ 6 applied, Defendants’ construction
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`is incorrect because it omits the alternative algorithms described at 1:60-2:1 and 3:51-61. With
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`respect to the first, Defendants argue that it is “too narrow.” But the passage at 1:40-59 plainly
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`does not relate to the description of “setting up a verification structure.” Nor is 3:51-61
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`objectionable because it touches on the dependent claim embodiments for “setting up a verification
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`structure.” To the contrary, Claim 3 expressly states that it may suffice.
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`“set up a verification structure”
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`8.
`Defendants’ response shows why its construction should be rejected. They do not even try
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`to justify replacing “set up a verification structure” with “forming a structure.” Nor can they.
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`“Courts do not rewrite claims.” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
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`Defendants’ “encrypting a license record using a pseudo-unique key for each computer”
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`limitation also should be rejected. Defs. Resp. at 7. Not only does it render Claim 8 superfluous,
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`but it conflicts with Claim 7, which stat