DCT

1:19-cv-01712

Ancora Tech Inc v. Lenovo Group Ltd

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-01712, D. Del., 09/12/2019
  • Venue Allegations: Venue is alleged to be proper as to Lenovo Group Ltd. as a foreign entity, and as to Lenovo (United States) Inc. and Motorola Mobility, LLC because they are organized under the laws of Delaware and have allegedly committed acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ smartphones and their over-the-air (OTA) software update mechanism infringe a patent related to restricting software operation using a verification structure stored in a computer's BIOS.
  • Technical Context: The technology concerns secure software licensing and validation, a field focused on preventing unauthorized software use and ensuring system integrity during updates.
  • Key Procedural History: The asserted patent has an extensive litigation history against numerous technology companies, including Microsoft, Apple, HTC, and Samsung. The complaint notes that the patent survived an ex parte reexamination in 2010 where all claims were confirmed. It also survived a Covered Business Method (CBM) review petition, where the PTAB found the patent recited a "technological improvement." The complaint further cites a 2018 Federal Circuit decision (in a case against HTC) holding that the invention provides a "tangible technological benefit" by moving a software-verification structure to a BIOS location, making the system "less susceptible to hacking."

Case Timeline

Date Event
1998-05-21 '941 Patent Priority Date
2002-06-25 '941 Patent Issue Date
2010-06-01 '941 Patent Reexamination Certificate Issued
2016-12-16 Alleged Infringing OTA Update Provided by Defendants
2017-04-25 Alleged Infringing OTA Update Provided by Defendants
2017-06-15 Alleged Infringing OTA Update Provided by Defendants
2019-09-12 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,411,941, "Method Of Restricting Software Operation Within A License Limitation," Issued June 25, 2002

The Invention Explained

  • Problem Addressed: The patent addresses the problem that software-based license enforcement methods are vulnerable to attack by "hackers" when license data is stored on easily modifiable media like a hard disk, while hardware-based solutions (e.g., dongles) are expensive and inconvenient (’941 Patent, col. 1:10-34).
  • The Patented Solution: The invention proposes a more secure method by tying software verification to the computer's hardware. It uses a unique key, permanently stored in a non-modifiable part of the computer's Basic Input/Output System (BIOS), to encrypt a "license record." This encrypted record is then stored in an erasable but non-volatile part of the BIOS (e.g., an E²PROM). When a program runs, a verifier uses the unchangeable key to check the license record, making it difficult to transfer a licensed program to an unauthorized computer, as the new computer would have a different, non-matching key (’941 Patent, col. 2:36-54; Fig. 1).
  • Technical Importance: This approach aimed to increase the security of software license validation by embedding the core verification mechanism into the computer's firmware, a layer that is substantially more difficult for a typical user or hacker to modify than application-level or operating-system-level files (’941 Patent, col. 3:5-14).

Key Claims at a Glance

  • The complaint asserts infringement of at least Claim 1 (Compl. ¶23).
  • Independent Claim 1 requires:
    • A method for use with a computer having an erasable, non-volatile memory area of a BIOS and a volatile memory area.
    • 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, where the structure contains at least one license record.
    • Verifying the program using the verification structure from the erasable, non-volatile memory of the BIOS.
    • Acting on the program according to the verification result.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused products are smartphones sold by Lenovo and Motorola, including the Lenovo Phab, Lenovo Phab Plus, Moto Z Play, Moto G4, and Motorola Droid Turbo 2 (Compl. ¶24). The complaint also implicates the servers and software used to transmit over-the-air (OTA) software updates to these devices (Compl. ¶25).

Functionality and Market Context

  • The accused functionality is the "verified boot" process used in the Android operating system during OTA software updates (Compl. ¶¶28, 30). This process is designed to ensure system integrity by cryptographically verifying that all executed code, from the bootloader to the operating system, comes from a trusted source (the device OEM) and has not been corrupted (Compl. ¶28). The complaint alleges that Defendants provided OTA updates on specific dates that caused the accused devices to perform the patented method (Compl. ¶26). One visual in the complaint describes this process as creating a "full chain of trust" to prevent exploits (Compl. p. 6).

IV. Analysis of Infringement Allegations

'941 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a method...with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area The accused smartphones contain erasable, non-volatile memory (ROM) and volatile memory (RAM). The complaint alleges an OTA update is saved to a "cache or data partition of the erasable, non-volatile memory of its BIOS." ¶¶29, 31 col. 6:60-62
[1] selecting a program residing in the volatile memory A program running on OTA servers, controlled by Defendants, selects an OTA update for transmission to the device. ¶31 col. 6:63
[2] 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 The device receives an OTA update package and saves it to a cache or data partition. This package allegedly contains a "verification structure," such as a cryptographic signature, key, or hash tree, which is equated with the "license record." ¶¶31-33 col. 6:63-65
[3] verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS The device reboots into recovery mode, loads the OTA update into RAM, and verifies its cryptographic signature against public keys stored on the device. The complaint provides a flowchart of this process. ¶34, p. 7 col. 7:1-4
[4] acting on the program according to the verification If the OTA update's signature is verified, the device proceeds to install the update; otherwise, the process would fail. ¶35 col. 7:4-5
  • Identified Points of Contention:
    • Scope Question: A central issue may be whether the memory architecture of a modern Android smartphone falls within the scope of the claim term "erasable, non-volatile memory area of a BIOS". The patent's specification describes a conventional PC BIOS architecture (’941 Patent, col. 2:43-44), while the complaint alleges that an Android device's cache or data partition, used for storing OTA update packages, constitutes this element (Compl. ¶31). The court will have to determine if "BIOS" can be construed to cover the distinct firmware and memory management systems in the accused smartphones.
    • Technical Question: The complaint equates the cryptographic signatures and hash trees used in Android's "Verified Boot" process with the claimed "license record" (Compl. ¶¶32-33). This raises the question of whether a mechanism for ensuring software integrity is the same as a mechanism for enforcing a software license, which the patent describes in terms of commercial rights like "author name, program name and number of licensed users" (’941 Patent, col. 2:55-57).
    • Evidentiary Question: What evidence does the complaint provide that the "cache or data partition" where an OTA update is temporarily stored is part of the "BIOS" (Compl. ¶31), as opposed to a separate storage partition managed by the operating system's recovery environment? The complaint makes this allegation conclusorily, supported by a general diagram of the OTA update process (Compl. p. 7).

V. Key Claim Terms for Construction

  • The Term: "erasable, non-volatile memory area of a BIOS"

    • Context and Importance: The plaintiff’s infringement theory rests on this term covering a cache or data partition in a modern smartphone. The defendants will likely argue for a narrower construction limited to the specific PC firmware architecture described in the patent. Practitioners may focus on this term as its construction could be dispositive of infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent states that the second non-volatile memory can "optionally be erased or modified" and gives E²PROM merely as an example ("e.g. E²PROM") (’941 Patent, col. 2:1-5, col. 2:64), which may support construing the term to cover other forms of erasable, non-volatile memory like the flash memory used in smartphone partitions.
      • Evidence for a Narrower Interpretation: The specification consistently frames the invention in the context of a "conventional computer having a conventional BIOS module" (’941 Patent, col. 2:43-44). The summary and claims repeatedly refer to setting up the verification structure specifically "in the BIOS" or in the "erasable non-volatile memory area of the BIOS," suggesting the memory must be an integral component of the BIOS itself, not a separate partition accessible by a bootloader.

  • The Term: "license record"

    • Context and Importance: This term's definition is critical because the plaintiff equates it with cryptographic signatures and hashes used for integrity checking in the accused Android OTA process. Whether these technical artifacts meet the definition of a "license record" is a key dispute.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: Claim 1 itself does not define the term, only requiring that the "verification structure accommodat[e] data that includes at least one license record" (’941 Patent, col. 6:64-65). This lack of specific definition in the claim could support a functional interpretation covering any data used to authorize software operation. The complaint provides a visual showing that OTA updates "must be signed with one of the keys expected by the system" or be rejected, which could be argued is a form of license (Compl. p. 8).
      • Evidence for a Narrower Interpretation: The detailed description provides specific examples of a license record's contents, such as "author name, program name and number of licensed users" (’941 Patent, col. 2:55-57). This language suggests a commercial licensing context, which a party could argue is distinct from a cryptographic hash used purely for technical integrity verification.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce infringement by providing the OTA updates and configuring the accused products to automatically perform the claimed verification steps upon receipt of an update (Compl. ¶¶39, 42). It further alleges that Defendants condition the "receipt of the benefit of a software update" on the performance of these steps (Compl. ¶38).
  • Willful Infringement: The complaint seeks enhanced damages pursuant to 35 U.S.C. § 284 (Compl., Demand for Relief ¶B), which is the basis for a willfulness claim. However, the complaint does not allege any facts supporting pre-suit knowledge of the '941 Patent.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "erasable, non-volatile memory area of a BIOS", which is rooted in the patent's description of a conventional PC architecture, be construed to cover the separate cache and data partitions used by the recovery environment of a modern Android smartphone?
  • A second key question will be one of functional and semantic scope: does a "license record", described in the patent in the context of commercial software usage rights, encompass the cryptographic signatures and hash trees used in the accused "Verified Boot" process for the distinct purpose of ensuring software integrity?
  • Finally, the case may turn on an evidentiary question: what proof can the plaintiff offer to demonstrate that the accused OTA update process, designed for system security and integrity, is not just analogous to, but is in fact an implementation of, the specific software licensing method claimed in the '941 Patent?