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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 1 of 27
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`EXHIBIT 4
`EXHIBIT 4
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 1 of 27
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`EXHIBIT 4
`EXHIBIT 4
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 2 of 27
`irese 6;21-cv-00735-ADA
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`NITED STATES
`PATENT AND TRADEMARKOFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`90/014,865
`
`09/21/2021
`
`6411941
`
`TO BE DETERMINED
`
`2765
`
`VENABLELLP
`P Oo BOX 34385
`WASHINGTON,DC 20043-9998
`
`NGUYEN,MINH DIEU T
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`11/17/2021
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 3 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 3 of 27
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`KNOBBE MARTENS OLSON 7 BEAR LLP
`2400 MAIN STREET
`FOURTEENTH FLOOR
`
`IRVINE, CA 92614
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/074,865.
`
`PATENT UNDER REEXAMINATION 6411947.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 4 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 4 of 27
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`Patent Under Reexamination
`
`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`MINH DIEU T NGUYEN
`3992
`No
`
`90/014,865
`
`6411941
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe reexamination filed 09/21/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments:
`
`a)¥)
`
`PTO-892,
`
`b)0
`
`PTO/SB/08,
`
`c)Q Other:
`
`1.
`
`The requestfor exgarfe reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`MINH DIEU NGUYEN/
`Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20211019
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 5 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 5 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
`
`DECISION GRANTING EX PARTE REEXAMINATION
`
`This is in response to a request for an Ex Parte Reexamination of claims 1-3, 6-
`
`14 and 16 U.S. Patent No. 6,411,941 (hereinafter “the ‘941 Patent”). The ‘941 Patent
`
`wasissued on June 25, 2002.
`
`A substantial new question of patentability affecting claims 1-3, 6-14 and 16 of
`
`U.S. Patent No. 6,411,941 is raised by the present request for ex parte reexamination
`
`filed September 21, 2021.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in ex parte
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(c).
`
`Notification of Concurrent Proceedings
`
`The patent owneris reminded of the continuing responsibility under 37 CFR
`
`1.985 to apprise the Office of anylitigation activity, or other prior or concurrent
`
`proceeding, involving the ‘941 Patent throughout the course of this reexamination
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 6 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 6 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 3
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`proceeding. The third party requester is also reminded of the ability to similarly apprise
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`the Office of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP § 2686 and 2686.04.
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`PROSECUTION HISTORY
`
`The ‘941 Patent wasoriginally filed as Application No. 09/164,777 on October 1,
`
`1998, having claims 1-15. Foreign priority was claimed to Israel Patent Application No.
`
`124571, filed May 21 1998, for which a certified copy in English was concurrently filed.
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`The Office mailed a non-final office action on October 18, 2000, rejecting claims
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`1-15. Claims 1-4 and 11-13 were rejected under 35 U.S.C. 102(e) over U.S. Patent No.
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`5,892,900 to Ginter et al. (hereinafter Ginter). Claims 5, 7, and 8 were rejected under 35
`
`U.S.C. 103(a) over Ginter in view of U.S. Patent No. 5,684,951 to Goldmanetal.
`
`(hereinafter Goldman). Claim 9 was rejected under 35 U.S.C. 103(a) over Ginter in view
`
`of Goldman further in view of U.S. Patent No. 5,490,216 to Richardson, III (hereinafter
`
`Richardson), although the explanation of the rejection to that claim did not rely upon
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`Richardson atall. It is noted that the explanation of this rejections also suggestedthat
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`claims 6 and 10 should also have beenrejected over Ginter. Claims 14 and 15 were not
`
`discussed.
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`A second non-final rejection was mailed on December 20, 2000 that clarified the
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`previous office action, stating that claims 1-4, 6, and 10-13 were rejected under 35
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`U.S.C. 102(e) over Ginter and claims 5, 7-9, 14, and 15 were rejected under 35 U.S.C.
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`103(a) over Ginter in view of Goldman.
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 7 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 4
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`The Applicant responded on May 21, 2001, amending claim 1, cancelling claims
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`14 and 15, and adding claims 16-20.
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`The Office mailed a final rejection on June 22, 2001, rejecting claims 1-13 and
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`16-20. Claims 1-13 and 16-19 were rejected under 35 U.S.C. 112, first paragraph, for
`
`incorporating new matter. Claim 20 was rejected under 35 U.S.C 112, second
`
`paragraph for being incomplete. Claims 1-4, 6, and 10-13 were rejected under 35
`
`102(e) over Ginter. Claims 5, 7-9, and 16-20 were rejected under 35 U.S.C. 103 over
`
`Ginter in view of Goldman.
`
`The Applicantfiled an amendment on November 14, 2001 with a Requestfor
`
`Continued Examination (RCE), amending claims 1, 3-7, 9-12, and 16-20 and adding
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`claims 21-23.
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`The Office then mailed a non-final rejection on January 15, 2002, rejecting all of
`
`the claims. Claims 11, 12, 15, 16 were rejected under 35 U.S.C. 112, first paragraph for
`
`lacking enablement. Claims 20 and 21 were rejected under 35 U.S.C. 112, second
`
`paragraph for being indefinite. The office action stated that claims 1-23 were rejected
`
`under 35 U.S.C. 103(a) over U.S. Patent No. 6,189,146 to Misra et al. (hereinafter
`
`Misra) in view of Goldman further in view of U.S. Patent No. 5,479,639 to Ewertz et al.
`
`(hereinafter Ewertz). It is noted that only claims 1-13 and 16-23 should have been
`
`rejected in this action, as claims 14 and 15 had been previously cancelled.
`
`The Applicant respondedbyfiling an amendment on February 5, 2002, amending
`
`claims 16 and 20 and cancelling claims 11 and 12, leaving claims 1-10, 13, and 16-23
`
`to be examined.
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 8 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 8 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 5
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`A Notice of Allowance was mailed by the Office on March 28, 2002, including an
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`Examiner's Amendment amending claims 1 and 20. Regarding claims 1-10, 13, and 16-
`
`19, the Examiner noted that,
`
`“the key distinction between the present invention and the closest priorart, 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 BIOSto verify the
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`program using the verification structure and having a user act on the program according
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`to the verification. Further, it is well known to those of ordinaryskill of the art that a
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`computer BIOSis not setup to manage a software license verification structure. The
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`present invention overcomesthis difficulty by using an agent to set up a verification
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`structure in the erasable, non-volatile memory of the BIOS.“
`
`Regarding claims 20-23, the Examiner noted that,
`
`".. a 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 BIOSlevel, respectively. More specifically, the closestprior art
`
`systems, singly or collectively, do not teach extracting licensing information from a
`
`software program, encrypting the information and storing it in the BIOS. Further, it is
`
`well known to those of ordinary skill of the art that a computer BIOSis not setup to store
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`license information. The present invention overcomesthis difficulty by utilizing an agent
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 9 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 9 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 6
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`to verify the application software program using the license information stored in the
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`erasable, writable, non-volatile memory of the BIOS.”
`
`The claims were renumbered as claims 1-19. None of the claims of the ‘941
`
`patent have been subjectto a final holding of invalidity by a court.
`
`The ‘941 Patent has been involvedin:
`
`Ex parte reexamination by control number 90/010,560 (hereinafter “the ‘560
`
`Reexam’)filed on May 28, 2009. The prior art submitted by the requester, U.S. Patent
`
`No. 5,734,819 to Lewis. The Office states that Lewis did disclose license information
`
`stored in the non-volatile memory of a BIOS (see NIRC dated March 9, 2010, page 4).
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`However, the system in Lewis uses the license information to verify the device itself, not
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`a program running on the device. That is, the program in Lewis uses the encrypted
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`license information in the BIOS memoryto verify that the serial numberof the device
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`has not been altered, instead of using the encrypted license information to verify that
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`the program was licensed. The Office allowed issuance of the reexamination certificate
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`on March 9, 2010.
`
`Apple Inc. v. Ancora Techs., Inc., Case CBM2016-00023
`
`The Board orderedthat the joint motion to terminate CBM2016-00023 is granted,
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`and this proceeding is terminated asto all parties including Apple and Ancora.
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 10 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 10 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 7
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`HTC Corp. v. Ancora Techs., Inc., Case CBM2017-00054
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`The Board denied institution, finding that the ‘941 Patent is not a covered
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`business method patent because it discloses a technical solution in the form of storing
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`the license record in the memoryof the BIOS. HTC Corp. v. Ancora Techs., Inc., No.
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`CBM2017-00054,Institution Decision, Paper 7, pp. 10-12 (Dec. 1, 2017). The Board
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`therefore did not consider the merits of the prior art-based invalidity grounds presentin
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`the CBM petition.
`
`IPR2020-01184: Samsung Electronics Co., Lid v. Ancora Techs., Inc.
`
`Samsung filed a petition for inter partes review against the ‘941 Patent on June
`
`25, 2020. The Board denied the Samsung IPR on January 5, 2021, no trial is instituted.
`
`The litigation was settled right beforetrial.
`
`IPR2020-01609: TCT Mobile (US) Inc. v. Ancora Techs., Inc.
`
`On September 10, 2020, TCTfiled a petition for inter partes review against
`
`claims 1-3, 6-14, and 16 of the ‘941 Patent. On February 16, 2021, the PTAB instituted
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`inter partes review proceedings in the TCT IPR. On April 5, 2021, the parties filed a
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`Joint Motion to Terminate Proceedings based on settlement. On June 10, 2021, the
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`Board ordered an inter partes reviewis instituted for the following grounds: claims 1-2,
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`11, 13 are unpatentable under 103(a) as obvious over Hellman and Chou and claims 1-
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`3, 6-14, 16 are unpatentable under 103(a) as obvious over Hellman, Chou and
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 11 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 11 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 8
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`Schneck. On July 16, 2021, the Board ordered that the Joint Motion to Terminatefiled in
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`both proceedings (IPR2020-01609 and IPR2021-00663) is granted and terminated both
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`proceedings due to settlement after institution of trial.
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`IPR2021-00570: HTC Corp. v. Ancora Techs., Inc.,
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`The grounds and prior art references presented in this IPR are the same as the
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`grounds presented in the TCTinstituted petition. The Board denied the institution based
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`on the majority of General Plastics factors (Factors 1-3, 5, and 6). The Board further
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`ordered that the Motion for Joinder is denied.
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`IPR2021-00581: LG Electronics v. Ancora Techs., Inc.,
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`The grounds and prior art references presented in this IPR are the same as the
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`grounds presented in the TCTinstituted petition and other “copycat” IPR petitions filed
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`based on the TCTinstituted petition. The Board denied the institution related to Fintiv
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`(Factors 2-3 and 4-5). The Board further ordered that the Motion for Joinder is denied.
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`IPR2021-00583: Samsung Electronics v. Ancora Techs., Inc.,
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`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCTinstituted petition and other “copycat” IPR petitions filed
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 12 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 12 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 9
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`based on the TCTinstituted petition. The Board ordered that the proceeding is
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`terminatedin light of the settlement agreement among parties.
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`IPR2021-00663: Sony Mobile Communications v. Ancora Techs.,Inc.,
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`The grounds and prior art references presented in this IPR are the same as the
`
`grounds presented in the TCT instituted petition and other “copycat” IPR petitionsfiled
`
`based on the TCTinstituted petition. Petitioner Sony and Ancora Technologies, Inc.
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`({Patent Owner’) filed a Joint Motion to Terminate in each of the IPR2020-01609 and
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`IPR2021-00663. Although the instant inter partes reviews have been instituted, a final
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`written decision has not entered.
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`The Board ordered that the Joint Motion to Terminate filed in IPR2020-01609 and
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`IPR2021-00663 is granted. It is further ordered that both IPR2020-01609 and IPR2021-
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`00663 are terminatedin light of the settlement agreement among parties.
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`IPR2021-01338: Nintendo Co., v. Ancora Techs., Inc.,
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`The grounds and prior art references presented in this IPR are the same as the
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`groundspresented in the TCT instituted petition and other “copycat” IPR petitionsfiled
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`based on the TCTinstituted petition. The proceeding is pending.
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`IPR2021-01406: Roku Inc., v. Ancora Techs., Inc.,
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 13 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 13 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 10
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`The grounds and prior art references presented in this IPR are the same as the
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`groundspresented in the TCT instituted petition and other “copycat” IPR petitionsfiled
`
`based on the TCTinstituted petition. The proceeding is pending.
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`PROPOSED SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
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`The Requestor requested reexamination of claims 1-3, 6-14 and 16 of the '941
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`patent based upon the following prior art patents:
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`U.S. Patent No. 4,658,093 to Hellman, filed on July 11, 1983, and issued on April
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`14, 1987 (“Hellman’).
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`U.S. Patent No. 5,892,906 to Chou, filed on July 19, 1996 and issued on April 6,
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`1999 (“Chou”).
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`U.S. Patent No. 5,933,498 to Schneck,filed on November 5, 1997 and that
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`claimspriority to an application filed on January 11, 1996 and issued on August3, 1999
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`(“Schneck’).
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`The Requestor proposesrejection as follows:
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`SNQ1: Claims 1-2, 11, 13 are rendered obvious by Hellman in view of Chou under 35
`
`U.S.C. 103(a).
`
`SNQ2: Claims 1-3, 6-14, 16 are rendered obvious by Hellman in view of Chou and
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`further in view of Schneck under 35 U.S.C. 103(a).
`
`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 14 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 14 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 11
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`ANALYSIS OF SUBSTANTIAL NEW QUESTIONSOF PATENTABILITY
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`Claim Construction
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`During reexamination, claims are given the broadest reasonable interpretation
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`consistent with the specification and limitations in the specification are not read into the
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`claims (in re Yarnamoto, 740 F.2d 1569, 222 USPO 934 (Fed. Cir, 19643}.
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`“license record”
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`Claim 1 recites “using an agentto set up a verification structure in the erasable,
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`non-volatile memory of the BIOS,the verification structure accommodating data that
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`includes at least one license record.” (emphasis added).
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`Aclaim term should be given its ordinary meaning in the pertinent context, unless
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`the patentee has made clearits adoption of a different definition or otherwise disclaimed
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`that meaning. (Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.
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`2012).
`
`The Specification expressly discloses that “according to the invention, each
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`application program thatis to be licensed to run on the specified computer, is associated
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`with a license record.” (the ‘941 Patent, 1:53-55 (emphasis added). A license record
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`“consists of author name, program name and numberof licensed users (for network).”
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`(the ‘941 Patent, 1:55-57).
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`Only in the “Detailed Description of a Preferred Embodiment” section, the
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`Specification describes “the licensed-software-program includes contents used to forma
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`
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 12
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`license-record.” (the ‘941 Patent, 5:25-29, 6:7-10). Notably, claim 1 itself does not recite
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`such a requirement.
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`Therefore, in light of the claim language, the Specification, and the evidencein this
`
`present record,it is determined thata “license record” associated with a licensed program
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`is “arecord having information for verifying that licensed program’ for purposesofthis
`
`Decision.
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`A substantial new question of patentability is raised by a cited patent or printed
`
`publication when there is a substantiallikelihood that a reasonable examiner would
`
`consider the prior art patent or printed publication important in deciding whether or not
`
`the claim is patentable. A substantial new question of patentability is not raised by prior
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`art presented in a reexamination requestif the Office has previously considered (in an
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`earlier examination of the patent) the same question of patentability as to a patent claim
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`favorable to the patent owner based on the same prior art patents or printed
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`publications. In re Swanson, 88 USPQ2d 1196 (Fed. Cir. 2008).
`
`Hellman in view of Chou
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`Hellman in view of Chou raises a substantial new question of patentability
`
`regarding claims 1-2, 11,13 as presented in SNQ 1. Hellman in view of Chou raises a
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`substantial new question by providing teachings that was considered during the
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`prosecution history of the ‘941 patent. Although the grounds and prior art references
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`overlap with the TCTinstituted petition, a substantial new question of patentability exists
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`and is not cumulative of the TCTinstituted petition because Ancora settled each
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`
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`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 16 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 16 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
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`Page 13
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`instituted IPR such that no IPR on the ‘941 Patent resulted in a final written decision.
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`Thus, the prior art references are not cumulative of any concluded examination or
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`concluded review of the patent or pending reexamination.
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`Accordingly, Hellman in view of Chou are relevant to the reason for allowanceof
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`the claims.
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`Hellman discloses a method and apparatus in which use of a software package
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`can be authorized for a particular base unit a specific numberof times (Hellman, 4:37-
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`40).
`
`
`aea
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`
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`Aboveis Fig. 1 of Hellmanillustrates a block diagram of a pay-per-use software
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`control system (Hellman, 5:1-2). The system includes a base unit 12 which can be a
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`computer (Hellman, 2:24-27), a software of “software package” 17, and an authorization
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`billing unit 13. The base unit 12 communicates with authorization billing unit 13 over an
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`insecure communication channel 11, using transmitter-receiver units 14, 16 (Hellman,
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`5:39-50). The user at base unit 12 obtains software package 17 by purchasing it at a
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`store, over telephone line, or in some similar manner (Hellman, 5:51-53). The base unit
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`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 17 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 17 of 27
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`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 14
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`12 sends to authorization billing unit 13 a “user originated requestfor software use”
`
`(Hellman, 5:57-59). The request includes software name (“the software package to be
`
`used”), serial number (“a serial number, identification number, user name or similar
`
`identifier unique to base unit 12”), N ("the number of additional uses of software
`
`requested”), R (“random number, counter value, or other non-repeating number
`
`generated by the base unit 12”), and billing information (Hellman:5:57 -6:2). The
`
`authorization billing unit 13 receives the user’s request, generates authorization A for
`
`unit 12 to use software package 17 an additional N times and sends authorization A to
`
`the base unit 12 (Hellman, 6:3-8).
`
`
`
`
`
`2PILOTTAPAAEDSLLLERAAAAAALLLLLLLLTERAAILEDIDLLLDIISIDeeEPMAASIII
`
`
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`SSAA
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`Z% 4
`
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`AEAAAEEALLENLG
`
`swah
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`Aboveis Fig. 8 depicts an implementation of base unit 12 during use of a
`
`software package (Hellman, 10:33-34). Software package 17 is connected to base unit
`
`12 and a signal representing software package 17 is operated on by one-way hash
`
`function generator 33 to produce an output signal which represents hash value H
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 18 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 18 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 15
`
`(Hellman, 10:34-38). Signal H is transmitted to update unit 36 to indicate which software
`
`package is being used (Hellman, 10:38-40). Update unit 36 uses value H as an address
`
`to non-volatile memory 37, which responds with a signal representing M, the numberof
`
`uses of software package 17 which arestill available (Hellman, 10:40-43).
`
`If value M is greater than 0, then update unit 36 sends a control signal to switch
`
`41 which activates software player 42, allowing it to use software package 17 (Hellman,
`
`10:44-46). Update unit 36 also decrements M to M—1 andstores this as the new value
`
`in address H in non-volatile memory 37 (Hellman, 10:46—49). If M=0, then update unit
`
`36 does not change the contents of nonvolatile memory 37, but neither does it send a
`
`control signal to activate software player 42 (Hellman, 10:50-53). Thus, the user is
`
`prevented from using software package 17 for which he does not have current
`
`authorized use (Hellman, 10:53-54).
`
`Chou discloses an apparatus and a method for discouraging computertheft
`
`(Chou, Abstract). Chou’s invention requires that a user enters a unique word or number
`
`related to the particular computer each time the computer is powered up (Chou, 2:11-
`
`14). The technique is implemented with a security routine that is stored in the BIOS
`
`memory (Chou, 2:10-32). The security routine requires verification of a password
`
`entered by the user, or a verification of a quantity read from an externally connected
`
`memory device (Chou, 2:16—18).
`
`Chou also discloses that, at the time of its invention, “[rjecent changesin the
`
`computer BIOS memory storage devices permit writing data to the BIOS memory,
`
`offering the opportunity to provide password protection within the same memory which
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 19 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 19 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 16
`
`stores the BIOS routines.” (Chou, 1:63-66). And, “any attempt to delete the protection
`
`will result in the BIOS routine being disabled, disabling the boot up process.” (Chou,
`
`1:66-2:1). “EEPROM flash devices may be programmed with BIOS routines which
`
`permit the user to enter data without requiring the computer to be returned to the
`
`manufacture.” (Chou, 2:2-4). According to Chou, its “invention makes use of these new
`
`BIOS memory devicesfor effecting security measures which discourage theft.” (Chou,
`
`2:4-7).
`
`Hellman discloses using update unit 36 (acting as the required “agent”) to set up
`
`a verification structure in non-volatile EEPROM memory 37 (the required “erasable,
`
`non-volatile memory”) (Hellman, 10:1-4).
`
`The update unit 36 sets up the required “verification structure’ in the non-volatile
`
`memory 37 at least in the form of storing the value M at a specific address H for a
`
`software program identified by that hash value H. The value M is the required “license
`
`record”, because it indicates the scope of authorized use — the number of uses, where
`
`“M?’is the number — for the specific software package 17 identified by hash value H.
`
`Storing the value M at the address H constitutes setting up a verification structure
`
`because it includes storing a license record at a specific license record location that
`
`corresponds to the licensed program (‘941 Patent, 1:59-62; 6:17-21).
`
`Hellman discloses using value M (the required “license record”) that is stored in
`
`non-volatile memory 37 to verify software package 17 (the required “program”)
`
`(Hellman, 10:33-54). In particular, Hellman discloses that when an attempt is made to
`
`run software package 17, the value H is generated and sentto the update unit 36, which
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 20 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 20 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 17
`
`uses value H as an addressin non-volatile memoryto verify if a license exists for
`
`software package 17 (Hellman, 10:33-54). If a license does exist, update unit 36
`
`retrieves the number of remaining authorized uses value M, and a determination is
`
`made as to whether the number of authorized uses is greater than zero (Hellman,
`
`10:44-54).
`
`Hellman discloses allowing software package 17 to be usedif a license record is
`
`found in non-volatile memory 37 and there are authorized uses remaining (Hellman,
`
`10:40-49).
`
`There is a Substantial likelihood that a reasonable examiner would consider
`
`Hellman in view of Chou important in determining the patentability of at least claim 1.
`
`Accordingly, Hellman in view of Chou raises a substantial new question of patentability
`
`as to at least claim 1.
`
`Hellman in view of Chou and Schneck
`
`Hellman in view of Chou and Schneckraises a substantial new question of
`
`patentability regarding claims 1-3, 6-14, 16 as presented in SNQ 2. Hellman in view of
`
`Chou and Schneck raises a substantial new question by providing teachings that was
`
`considered during the prosecution history of the ‘941 patent. Although the grounds and
`
`prior art references overlap with the TCTinstituted petition, a substantial new question
`
`of patentability exists and is not cumulative of the TCT instituted petition because
`
`Ancora settled each instituted IPR such that no IPR on the ‘941 Patent resulted in a final
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 21 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 21 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 18
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`written decision. Thus, the prior art references are not cumulative of any concluded
`
`examination or concluded review of the patent or pending reexamination.
`
`Accordingly, Hellman in view of Chou and Schneck are relevant to the reasonfor
`
`allowance of the claims.
`
`Hellman discloses a method and apparatus in which use of a software package
`
`can be authorized for a particular base unit a specific numberof times (Hellman, 4:37-
`
`40).
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`AEA E driver
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`Aboveis Fig. 1 of Hellmanillustrates a block diagram of a pay-per-use software
`
`control system (Hellman, 5:1-2). The system includes a base unit 12 which can be a
`
`computer (Hellman, 2:24-27), a software of “software package” 17, and an authorization
`
`billing unit 13. The base unit 12 communicates with authorization billing unit 13 over an
`
`insecure communication channel 11, using transmitter-receiver units 14, 16 (Hellman,
`
`5:39-50). The user at base unit 12 obtains software package 17 by purchasing it at a
`
`store, over telephone line, or in some similar manner (Hellman, 5:51-53). The base unit
`
`12 sends to authorization billing unit 13 a “user originated request for software use”
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 22 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 22 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 19
`
`(Hellman, 5:57-59). The request includes software name (“the software package to be
`
`used”), serial number (“a serial number, identification number, user name or similar
`
`identifier unique to base unit 12”), N ("the number of additional uses of software
`
`requested”), R (“random number, counter value, or other non-repeating number
`
`generated by the base unit 12”), and billing information (Hellman:5:57 -6:2). The
`
`authorization billing unit 13 receives the user’s request, generates authorization A for
`
`unit 12 to use software package 17 an additional N times and sends authorization A to
`
`the base unit 12 (Hellman, 6:3-8).
`
`
` OLILL
`
`
`
`LILLEREELLEEDLLLLLLLLLLLLLLLLLLLLYDLSPPLLELLODLISD
`
`Aboveis Fig. 8 depicts an implementation of base unit 12 during use of a
`
`software package (Hellman, 10:33-34). Software package 17 is connected to base unit
`
`12 and a signal representing software package 17 is operated on by one-way hash
`
`function generator 33 to produce an output signal which represents hash value H
`
`(Hellman, 10:34-38). Signal H is transmitted to update unit 36 to indicate which software
`
`
`
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 23 of 27
`Case 6:21-cv-00735-ADA Document 29-5 Filed 12/30/21 Page 23 of 27
`
`Application/Control Number: 90/014,865
`Art Unit: 3992
`
`Page 20
`
`package is being used (Hellman, 10:38-40). Update unit 36 uses value H as an address
`
`to non-volatile memory 37, which responds with a signal representing M, the numberof
`
`uses of software package 17 whicharestill available (Hellman, 10:40-43).
`
`If value M is greater than 0, then update unit 36 sends a control signal to switch
`
`41 which activates software player 42, allowing it to use software package 17 (Hellman,
`
`10:44-46). Update unit 36 also decrements M to M—1 andstores this as the new value
`
`in addre
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