Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 1 of 14
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`Exhibit 6
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`Exhibit 6
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 2 of 14
`Trials@uspto.gov
`
`Paper No. 7
`571-272-7822
`
`Entered: December 1, 2017
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`ANCORA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case CBM2017-00054
`Patent 6,411,941 B1
`____________
`
`
`
`
`
`Before JONI Y. CHANG, RAMA G. ELLURU, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 3 of 14
`CBM2017-00054
`Patent 6,411,941 B1
`
`HTC Corporation and HTC America, Inc. (collectively “Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) seeking to institute a covered business
`method patent review of claims 1–19 of U.S. Patent No. 6,411,941 B1
`(Ex. 1001, “the ’941 patent”). Patent Owner, Ancora Technologies Inc. filed
`a Patent Owner Preliminary Response (“Prelim. Resp.”). Paper 6. For the
`reasons discussed below, Petitioner has not demonstrated that the ’941
`patent is eligible for a covered business method patent review under section
`18 of the AIA.
`
`
`I. BACKGROUND
`A. The ’941 Patent (Ex. 1001)
`The ’941 patent is titled “Method of Restricting Software Operation
`Within a License Limitation.” The disclosed method is directed to “[a]
`method of restricting software operation within a license limitation that is
`applicable for a computer having a first non-volatile memory area, a second
`non-volatile memory area, and a volatile memory area.” Ex. 1001, Abstract.
`The specification explains that numerous methods have been
`disclosed for identifying and restricting the unauthorized software program’s
`operation. Id. at 1:11–13. The prior art methods include software and
`hardware based products. Id. at 1:19–32. Software based products validate
`authorized software usage by writing a license signature onto the computer’s
`volatile memory, such as a hard disk. Id. at 1:19–21. According to the
`specification, however, the prior art software products “are very vulnerable
`to attack at the hands of skilled system's programmers (e.g. ‘hackers’)” and
`“also subject to the physical instabilities of their volatile memory media.”
`Id. at 1:21–26. Hardware based products “validate authorized software
`
`
`
`2
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 4 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`usage by accessing a dongle that is coupled e.g. to the parallel port of the
`P.C.” Id. at 1:27–29. According to the specification, however, the prior art
`hardware products “are expensive, inconvenient, and not particularly
`suitable for software that may be sold by downloading (e.g. over the
`internet).” Id. at 1:29–32.
`The ’941 patent discloses a software access restriction “method [that]
`strongly relies on the use of a key and of a record, which have been written
`into the non-volatile memory of a computer.” Id. at 1:38–42. The
`specification explains that the “key” constitutes “a unique identification code
`for the host computer” and is “stored in a non-volatile portion of the BIOS,
`[and] it cannot be removed or modified.” Id. at 1:47–51. Further, “each
`application program that is to be licensed to run on the specified computer,
`is associated with a license record.” Id. at 1:52–54. “The license record
`may be held in either encrypted or explicit form.” Id. at 1:56–57.
`According to the disclosed method, there is a “an initial license
`establishment procedure, where a verification structure is set in the BIOS so
`as to indicate that the specified program is licensed to run on the specified
`computer.” Id. at 1:59–62. The disclosed method encrypts “the license
`record (or portion thereof) using said key (or portion thereof) exclusively or
`in conjunction with other identification information) as an encryption key.”
`Id. at 1:62–65. The resulting encrypted data also is stored in a second non-
`volatile section of the BIOS, e.g. E2PROM, or the ROM. Id. at 1:65–2:1
`Moreover, “the data in the second non-volatile memory may optionally be
`erased or modified,” in order to enable to add, modify or remove licenses.
`Id. at 2:1–5.
`
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`3
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 5 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`
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`The specification states that:
`in utilizing non-volatile
` [a]n
`important advantage
`memory such as that residing in the BIOS is that the required
`level of system programming expertise that is necessary to
`intercept or modify commands, interacting with the BIOS, is
`substantially higher than those needed for tampering with data
`residing in volatile memory such as hard disk.
`
`Id. at 3:4–9.
`In addition, “there is a much higher cost to the programmer, if his
`tampering is unsuccessful, i.e. if data residing in the BIOS (which is
`necessary for the computer's operability) is inadvertently changed by the
`hacker.” Id. at 3:10–13.
`The specification describes the process of verifying a license as
`follows:
`
`[W]hen a program is loaded into the memory of the
`computer, a so called license verifier application, that is a priori
`running in the computer, accesses the program under question,
`retrieves therefrom the license record, encrypts the record
`utilizing the specified unique key (as retrieved from the ROM
`section of the BIOS) and compares the so encrypted record to
`the encrypted records that reside in the E2PROM.
`
`Id. at 2:12–19.
`
`“In the case of [a] match, the program is verified to run on the
`computer.” Id. at 2:19–20.
`
`
` If on the other hand the sought encrypted data record is
`not found in the E2PROM database, this means that the program
`under question is not properly licensed and [an] appropriate
`application define[d] action is invoked (e.g. informing to the
`
`
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`4
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 6 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`user on the unlicensed status, halting the operation of the
`program under question etc.).
`
` Id. at 2:20–26.
`The specification further discloses that further action[] “includes the
`step of: restricting the program's operation with predetermined limitations if
`the comparing yields non-unity or insufficiency.” Id. at 6:39–41. Also:
`‘[r]estricting the program's operation with predetermined
`limitations’ may include actions such as erasing the software in
`volatile memory, warning the license applicant/user, placing a
`fine on the applicant/user through the billing service charges
`collected at the license bureau (if applicable), or scrambling
`sections of the BIOS of the computer (or of functions
`interacting therewith).’
`
`Id. at 6:46–51.
`
`B. Illustrative Claim
`
`Petitioner challenges claims 1–19 of the ’941 patent, of which claims
`1 and 18 are independent. Claim 1 illustrates the subject matter:
`
`1. A method of restricting software operation within a
`license for use with a computer including an erasable, non-
`volatile memory area of a BIOS of the computer, and a volatile
`memory area; the method comprising the steps of:
`
`selecting a program residing in the volatile memory,
`
`using an agent to set up a verification structure in the
`erasable, non-volatile memory of the BIOS, the verification
`structure accommodating data that includes at least one license
`record,
`
`verifying the program using at least the verification
`structure from the erasable non-volatile memory of the BIOS,
`and
`
`
`acting on the program according to the verification.
`
`
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`5
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 7 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`Id. at 6:59—7:4
`
`C. Related Proceedings
`
`Petitioner identifies several district court cases and a Federal Circuit
`case involving the ’941 patent. Pet. 1–2. In addition, Petitioner identifies
`CBM2016-00023, which challenged claims of the ’941 patent, but was
`terminated before a Decision on Institution was issued (CBM2016-00023,
`Paper 7) and Ex Parte Reexamination No. 90/010,560. Pet. 2.
`
`D. Real Party-in-Interest
`
`The Petition identifies HTC Corporation and HTC America, Inc. as
`the real parties-in-interest. Pet. 1.
`
`E. Grounds Asserted
`
`The Petition challenges the ’941 patent claims as directed to
`unpatentable subject matter under 35 U.S.C. § 101, indefinite under 35
`U.S.C. § 112, ¶ 2, lack written description under § 112, ¶ 1, and as
`anticipated by and obvious in light of asserted prior art. Id. at 1.
`II. ANALYSIS
`
`A.
`
`Claim Construction
`While Petitioner presents constructions for several claim terms, no
`terms require express construction for purposes of this Decision.
`B.
`Covered Business Method Patent
`
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. A “covered
`business method patent” is a patent that “claims a method or corresponding
`
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`6
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 8 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`
`1. Technological Invention
`The AIA excludes from covered business method patent review
`
`patents for a “technological invention.” AIA § 18(d)(1). To determine
`whether a patent is for a “technological invention,” we consider “whether
`the claimed subject matter as a whole recites a technological feature that is
`novel and unobvious over the prior art; and solves a technical problem using
`a technical solution.” 37 C.F.R. § 42.301(b).
`
`Petitioner asserts that the ’941 patent is not directed to a technical
`problem, but rather addresses the “‘the grand proliferation of illegally copied
`software.’” Pet. 14 (citing Ex. 1001, 1:14–15). Acknowledging that the
`“[c]laimed method restricts the operation of software,” Petitioner contends
`that “piracy is a ‘business problem’—not a technical one.” Id. (citing non-
`precedential PTAB decisions). Petitioner also argues that the claimed
`method replaces the use of expensive and inconvenient prior art hardware,
`and that “expense and inconvenience are not technical problems.” Id. at 16
`(citing Ex. 1001, 1:29–32).
`
`
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`7
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 9 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`Petitioner further argues that the ’941 patent claims do not solve a
`
`technical problem with a technical solution. Id. at 15. Petitioner contends
`that the ’941 patent’s solution to the disclosed “business problem” is
`“fundamentally organizational, not technical.” Id. According to Petitioner,
`the ’941 patent “describes and claims organizational choices for the
`locations where a key and license-record should be stored.” Id. Petitioner
`asserts that the storage of a key and license-record in specific locations is not
`a technical solution, “but the mere rearrangement of which data is stored in
`which memory areas.” Id. (citation omitted).
`
`Lastly, Petitioner argues that the ’941 patent discloses “conventional”
`elements. Id. Specifically, Petitioner asserts that “[t]he alleged invention is
`not directed to any new computer technology, but rather to storing particular
`information in a particular conventional memory to provide conventional
`benefits.” Id. Petitioner expounds, contending that claims 1, 2, and 10
`merely recite using or combining “known technologies to achieve
`predictable results.” Id. at 16–20. As an example, Petitioner notes that
`claim 1 recites “a computer including an erasable, non-volatile memory area
`of a BIOS of the computer, and a volatile memory area.” Id. at 17.
`
`Patent Owner responds that the claims of the ’941 patent solve a
`technical problem—“the vulnerability of license authentication data using
`conventional data storage techniques to [verify] unauthorized modification,”
`using a technical solution—“setting up a verification structure in non-
`volatile memory of the BIOS not ordinarily considered to be a storage
`medium.” Prelim. Resp. 17–18 (citation omitted). Specifically, Patent
`Owner contends that the fundamental operation of a given computer is
`changed, and “the nonvolatile BIOS memory is used as a novel and less-
`
`
`
`8
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 10 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`hackable structure for setting up the claimed verification structure to
`perform software verification operations.” Id. at 18. For the reasons
`discussed below, Petitioner has not sufficiently persuaded us that the
`“technological invention” exception to a covered business method patent
`review does not apply to the ’941 patent.
`
`Petitioner asserts that the ’941 discloses a method to restrict the
`operation of software in order to address piracy, which Petitioner contends is
`a “‘business problem,’” not a technical one, and that the claimed method
`merely replaces “the use of expensive and inconvenient prior art hardware.”
`Pet. 14, 16. As Patent Owner argues, however, Petitioner’s misidentifies the
`problem addressed by the claims. Prelim. Resp. 19–20. The “problem” the
`’941 patent seeks to address is the technical problems resulting from the
`vulnerability of license authentication and software restriction using
`conventional data storage techniques—software based products that are
`vulnerable to hacking and hardware based products that are expensive,
`inconvenient, and not suitable for downloaded software. Ex. 1001, 1:19–32.
`In other words, the claims of the ’941 patent recite a technological
`improvement to problems arising in prior art software and hardware methods
`of restricting an unauthorized software program’s operation.
`Thus, we determine the disclosed method addresses a “technical problem.”
`
`We further determine that the disclosed method’s solution to address
`the technical problem is technical. Petitioner argues that the ’941 patent
`solution is “fundamentally organizational, not technical” because it “claims
`organizational choices for the locations where a key and license-record
`should be stored.” Pet. 15. Petitioner avers that the storage of the key and
`license-record in specific locations is the “mere rearrangement of which data
`
`
`
`9
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 11 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`is stored in which memory areas.” Id. (citation omitted). Petitioner’s
`“organizational” argument is unavailing because the ’941 patent not only
`changes the location to store data—license-record and key—but the
`disclosed method also varies the type of medium used—non-volatile media
`instead of prior art volatile memory. See Prelim. Resp. 20. Specifically, the
`disclosed method modifies the BIOS, which the ’941 patent contends results
`in reduced vulnerability to “hackers.” See Ex. 1001, 1:44–2:46. As the ’941
`specification explains:
`[a]n important advantage in utilizing non-volatile memory such
`as that residing in the BIOS is that the required level of system
`programming expertise that is necessary to intercept of modify
`commands, interacting with the BIOS, is substantially higher
`than those needed for tampering with data residing in volatile
`memory such as [a] hard disk.
`
`Ex. 1001, 3:4–9. “Furthermore, there is a much higher cost to the
`programmer, if his tampering is unsuccessful, i.e. if data residing in
`the BIOS (which is necessary for the computer operability) is
`inadvertently charged by the hacker.” Id. at 3:9–13. Thus, we are
`sufficiently persuaded that the ’941 patent’s solution to the addressed
`problem is rooted in technology, and thus, is a “technical solution.”
`
`Lastly, Petitioner has not sufficiently persuaded us that the ’941 patent
`recites a technological solution that is not novel and nonobvious for
`purposes of satisfying the “technological invention” exception in
`§ 42.301(b). Petitioner contends that “[t]he alleged invention is not directed
`to any new computer technology, but rather to storing particular information
`in a particular conventional memory to provide conventional benefits.” Pet.
`15. Similarly, Petitioner contends that claims 1, 2, and 10 recite “known
`
`
`
`10
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 12 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`technologies to achieve predictable results.” Id. at 16. For example,
`Petitioner asserts that “‘a computer including an erasable, non-volatile
`memory area of a BIOS of the computer, and a volatile memory area’” (id.
`at 17 (citing Ex. 1001, 1:46–48)) and “‘a unique identification code’” (id.
`(citing Ex. 1001, 1:48–51)) were conventional. Petitioner’s contentions
`address individual claim elements, but not the claims as a whole, as required
`by § 42.301(b). As an example, Patent Owner contends the use of the non-
`volatile BIOS memory to store the license-record was novel and nonobvious
`for § 42.301(b) purposes. Prelim. Resp. 22–26. Specifically, Patent Owner
`contends that “the use of non-volatile BIOS memory for license key storage
`was unexpected, inventive, and demanded an unusual degree of skill to
`implement—as manifested by the technological features of the invention.”
`Id. at 22. Petitioner, however, does not address the technological feature of
`storing the license-record and key in the nonvolatile memory of the BIOS as
`opposed to volatile memory, such as a hard disk, but rather refers to the
`individual elements of the claims without considering the claims as a whole,
`as required by § 42.301(b). See id.; Prelim. Resp. 25–26. Petitioner’s
`argument is, thus, unavailing.
`We are persuaded, therefore, that the exclusion for a “technological
`invention” applies in this case. Accordingly, we conclude that based on the
`current record, the ’941 patent is not a covered business method patent
`eligible for review.
`C. CONCLUSION
`In view of the foregoing, we conclude that the ’941 patent is not a
`covered business method patent under AIA § 18(d)(1), and thus, is not
`
`
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`11
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 13 of 14
`CBM2017-00054
`Patent 6,411,941 B1
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`eligible for review using the transitional covered business method patent
`review program.
`
`
`
`III. ORDER
`For the reasons given, it is,
`ORDERED that a covered business method patent review is denied.
`
`12
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`Case 6:21-cv-00735-ADA Document 30-3 Filed 01/06/22 Page 14 of 14
`CBM2017-00054
`Patent 6,411,941 B1
`
`PETITIONER:
`Irfan A. Lateef
`Brian C. Claassen
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2ial@knobbe.com
`2bcc@knobbe.com
`BoxHTC57@knobbe.com
`
`PATENT OWNER:
`John P. Rondini
`John S. LeRoy
`Marc Lorelli
`Mark A. Cantor
`BROOKS KUSHMAN P.C.
`jrondini@brookskushman.com
`jleroy@brookskushman.com
`mlorelli@brookskushman.com
`mcantor@brookskushman.com
`ANCC0114CBMR1@brookskushman.com
`
`
`
`13
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`
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