DCT
1:20-cv-00034
Ancora Tech Inc v. LG Electronics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ancora Technologies Inc (Delaware)
- Defendant: LG Electronics Inc (Republic of Korea) and LG Electronics U.S.A., Inc. (Delaware)
- Plaintiff’s Counsel: Parker Bunt & Ainsworth
- Case Identification: 1:20-cv-00034, W.D. Tex., 06/21/2019
- Venue Allegations: Venue is alleged in the Western District of Texas on the basis that Defendant LG Electronics U.S.A., Inc. maintains a regular and established physical place of business in Austin, Texas.
- Core Dispute: Plaintiff alleges that Defendants’ smartphones and the associated over-the-air (OTA) software update process infringe a patent related to a method for securely verifying and restricting software operation on a computer.
- Technical Context: The technology concerns software anti-piracy and device security, specifically methods that use a hardware-based root of trust to ensure that only authorized software is permitted to run on a device.
- Key Procedural History: The complaint notes that the asserted patent has a significant history, including a reexamination proceeding that confirmed the patentability of all claims, and multiple prior litigations. In those litigations, key claim terms were construed by a district court, and the patent’s validity has been affirmed by the Court of Appeals for the Federal Circuit in decisions rejecting arguments of indefiniteness and subject matter ineligibility under § 101. The Patent Trial and Appeal Board also previously denied a request to institute a covered business method review.
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 |
| 2012-12-31 | N.D. Cal. issues claim construction order in prior case |
| 2016-11-21 | First listed date of accused OTA updates for LG G5 |
| 2018-11-20 | Federal Circuit affirms '941 patent validity in prior case |
| 2019-06-21 | 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"
- Patent Identification: 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 of unauthorized software copying and operation, noting that purely software-based protection methods are vulnerable to skilled programmers ("hackers"), while hardware-based solutions like dongles are inconvenient, expensive, and unsuitable for software distributed over the internet (Compl. ¶19; ’941 Patent, col. 1:10-34).
- The Patented Solution: The invention proposes a method to tie a software license to a specific computer’s hardware. It uses a key stored in a non-modifiable, non-volatile memory area of the computer’s BIOS (e.g., ROM) to verify a "license record" stored in a separate, modifiable non-volatile memory area (e.g., E2PROM). When a program is selected to run, a verifier uses the hardware key to check the program's license against the stored record. If the verification is successful, the program is allowed to operate; otherwise, its operation is restricted. This creates a security mechanism rooted in the computer’s fundamental hardware ('941 Patent, Abstract; col. 2:36-54).
- Technical Importance: The described method offered a more robust security solution than software-only methods by leveraging the computer's low-level boot hardware, without requiring the cost and inconvenience of external physical devices ('941 Patent, col. 3:5-18).
Key Claims at a Glance
- The complaint asserts at least Claim 1 (Compl. ¶30).
- 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 accommodates data including 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.
- The complaint’s reference to infringement of "at least Claim 1" suggests the possibility that dependent claims may be asserted later in the litigation (Compl. ¶30).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities include LGE smartphones (e.g., LG G5 and a long list of others) and the servers and software that LGE utilizes to transmit over-the-air (OTA) software updates to those devices (Compl. ¶¶ 31-33).
Functionality and Market Context
- The complaint focuses on the "Verified Boot" and OTA software update process used in Android-based LGE devices. This process is alleged to establish a "full chain of trust" from a hardware-protected root of trust to the bootloader and various software partitions (Compl. ¶35). When an OTA update is transmitted, the device verifies the update package's cryptographic signature against trusted keys stored on the device before installation. A screenshot in the complaint describes how the device reboots into a special recovery mode to perform this verification (Compl. ¶37). The complaint alleges LGE promotes these updates as providing significant benefits to consumers, such as "High level security" and improved features (Compl. ¶¶ 50-51). A provided screenshot from an LG support page lists new features for the Android 7.0 update, such as improved multitasking and battery saving (Compl. ¶¶ 51, p. 13).
IV. Analysis of Infringement Allegations
'941 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of restricting software operation...with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area... | LGE smartphones (e.g., the LG G5) contain both erasable, non-volatile memory (equated with "BIOS") and volatile memory (RAM). | ¶36 | col. 6:60-63 |
| selecting a program residing in the volatile memory, | After an OTA update is downloaded, the device reboots and loads the update package into its volatile memory (RAM) for verification and installation. | ¶41 | col. 6:64-65 |
| 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, | LGE's OTA servers transmit an update package to the device, which is saved in a partition of the device's non-volatile memory. This package contains a verification structure, such as a cryptographic signature, which is alleged to be a "license record." | ¶¶38-39 | col. 6:65-7:3 |
| verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and | In recovery mode, the device's recovery binary verifies the cryptographic signature of the update package against public keys stored on the device. The complaint includes a screenshot from Android documentation describing this verification step. | ¶¶37, 41 | col. 7:1-4 |
| acting on the program according to the verification. | If the signature is verified, the device installs the update. A screenshot from Android documentation is provided stating that if an update package is not signed with an expected key, "the installation process will reject" it. | ¶¶39, 42 | col. 7:5-6 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether the term "BIOS" (Basic Input/Output System), as used in the patent, can be construed to read on the complex firmware and bootloader architecture of a modern Android smartphone. The complaint alleges that the erasable, non-volatile memory of the accused devices constitutes the claimed "erasable, non-volatile memory area of a BIOS" (Compl. ¶38), a characterization that may be contested.
- Technical Questions: The infringement theory equates a cryptographic signature or hash tree, used for software integrity checking in the Android "Verified Boot" process, with the patent's "license record" (Compl. ¶¶ 39-40). A key question will be whether a cryptographic artifact for verifying code integrity performs the same function as a "license record," which the patent specification suggests may contain terms like "author name, program name and number of licensed users" ('941 Patent, col. 2:55-58).
V. Key Claim Terms for Construction
The Term: "BIOS"
Context and Importance: The applicability of the patent to modern smartphones hinges on the construction of "BIOS." Defendants will likely argue the term is limited to the specific Basic Input/Output System firmware found in personal computers of the era, which differs from the bootloader and firmware architecture of an Android device. The complaint alleges that the term has been construed in prior litigation, signaling its recognized importance (Compl. ¶23).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims a method for use with a "computer" generally ('941 Patent, col. 6:61) and refers to the BIOS as an exemplary environment containing non-volatile memory areas ('941 Patent, col. 5:50-53), which may support an argument that "BIOS" is not strictly limited to a specific PC architecture but refers to the fundamental, low-level firmware of a computing device.
- Evidence for a Narrower Interpretation: The specification repeatedly and specifically refers to "BIOS" and "a ROM section of a BIOS" ('941 Patent, col. 2:42-44, col. 5:51). This consistent use in the context of conventional computer architecture could be used to argue for a narrower meaning limited to the technology of that time.
The Term: "license record"
Context and Importance: The Plaintiff's infringement theory depends on equating a cryptographic signature with a "license record." The definition of this term is therefore critical. Practitioners may focus on this term because if it is construed to require specific licensing terms (e.g., number of users, duration), then a cryptographic signature used merely for code integrity may not meet the limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself does not define the contents of the "license record," merely requiring a "verification structure accommodating data that includes at least one license record" ('941 Patent, col. 7:2-3). Plaintiff may argue that any data used to verify whether software is permitted to run functions as a license record.
- Evidence for a Narrower Interpretation: The detailed description provides examples of a license record containing "author name, program name and number of licensed users" ('941 Patent, col. 2:55-58) and other "terms and conditions" ('941 Patent, col. 6:14-16). This language may support a narrower construction requiring the record to contain semantic information related to a license, rather than just a cryptographic key for integrity verification.
VI. Other Allegations
- Indirect Infringement: The complaint alleges facts that may support a claim of induced infringement. It states that LGE "pre-configures/programs each Accused Product to perform the... described steps" (Compl. ¶46), controls the OTA update process (Compl. ¶54), and encourages users to install the updates by advertising their benefits (Compl. ¶¶ 49-51).
- Willful Infringement: The complaint does not explicitly allege willfulness but includes a prayer for "enhanced damages pursuant to 35 U.S.C. § 284" (Prayer for Relief, ¶B). The complaint does not plead specific facts alleging LGE had pre-suit knowledge of the '941 patent, suggesting any claim for enhanced damages may rely on conduct occurring after the complaint was filed.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the terms "BIOS" and "license record", which are rooted in the patent's 1990s PC software security context, be construed to cover the distinct architecture and security mechanisms of modern Android smartphones? Specifically, does the bootloader/firmware of a smartphone constitute a "BIOS", and does a cryptographic signature used for code-integrity verification function as a "license record"?
- A related key question will be one of technical and functional mapping: does the accused Android "Verified Boot" process, which ensures the integrity of a software update, perform the same method as that claimed in the '941 patent, which is described as "restricting software operation within a license limitation"? The case may turn on whether verifying software integrity is legally and factually equivalent to enforcing the terms of a software license as described in the patent.