PTAB

CBM2016-00023

Apple Inc v. Ancora Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Restricting Software Operation Within a License Limitation
  • Brief Description: The ’941 patent relates to a method for restricting software operation via licensing. The method purports to enhance security by storing license records in an erasable, non-volatile memory area of a computer's Basic Input/Output System (BIOS).

3. Grounds for Unpatentability

Ground 1: Indefiniteness - Claims 1-18 are indefinite under 35 U.S.C. § 112.

  • Prior Art Relied Upon: N/A
  • Core Argument for this Ground:
    • Petitioner argued that claim terms such as "agent" (in claims 1 and 18) and "verification structure" (in claim 1) are means-plus-function limitations under § 112, ¶ 6 because they are recited functionally without sufficient corresponding structure. The petition asserted that the specification fails to disclose any algorithm or structure for performing the claimed functions, such as "using an agent to set up a verification structure." Without such disclosure, the scope of the claims is not reasonably certain, rendering them indefinite. Petitioner also argued that dependent claims 3, 5, 8, 16, and 17 are indefinite due to ambiguous language and a lack of proper antecedent basis for key terms.

Ground 2: Obviousness over Hasebe and DMI Specification - Claims 1-3, 5-14, and 16-17 are obvious over Hasebe in view of the DMI Specification.

  • Prior Art Relied Upon: Hasebe (European Patent Application Publication No. EP 0 766 165 A2) and DMI Specification (Desktop Management BIOS Specification Version 2.0).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Hasebe taught a software licensing system that used unique keys (e.g., a CPU-ID) and a license file to prevent illicit software copying. However, Hasebe stored this license file on a user terminal's conventional storage, not in the BIOS. The DMI Specification, a well-known industry standard from 1996, disclosed a General-Purpose Non-Volatile (GPNV) memory area within the BIOS. This GPNV area was described as erasable and accessible to user applications for storing data securely.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve the security of the licensing system taught by Hasebe. Storing Hasebe’s license file in the DMI Specification's GPNV memory would make the license records more tamper-resistant and secure from physical theft compared to storage on a standard hard disk. The DMI Specification noted that the GPNV area could be hidden or locked, providing an explicit motivation for its use in secure applications.
    • Expectation of Success: The combination represented a simple substitution of one known storage location (hard disk) with another known, more secure storage location (BIOS GPNV memory) to achieve the predictable result of enhanced security for license data.

Ground 3: Obviousness over Hasebe, DMI Specification, and Arbaugh - Claims 1-3, 5-14, and 16-17 are obvious over Hasebe in view of the DMI Specification and Arbaugh.

  • Prior Art Relied Upon: Hasebe, DMI Specification, and Arbaugh ("A Secure and Reliable Bootstrap Architecture," 1997 IEEE Symposium).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground augmented the primary combination with Arbaugh, which Petitioner argued provided an express teaching for storing license records in an erasable non-volatile area of a BIOS. Arbaugh disclosed a secure bootstrap process where component signatures (a form of license record) are stored in the BIOS flash ROM and used to verify the operating system kernel before booting.
    • Motivation to Combine: Arbaugh's disclosure of using the BIOS for secure storage and verification of software components provided additional, explicit motivation to modify Hasebe’s licensing system in the manner claimed. It demonstrated a known technique and benefit of leveraging the BIOS for software integrity, which a POSITA would have readily applied to improve the security of Hasebe's anti-piracy method.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Chang (Patent 5,724,425) for teaching a license record embedded within the software program, Isikoff (Patent 5,748,084) for motivating secure storage in the BIOS to prevent tampering, and Shipman/Angelo (WO 97/36241 and EP 824,233 A2) for further disclosing secure GPNV data areas. These combinations relied on similar security-enhancement motivations.

4. Key Claim Construction Positions

  • "License Record": Petitioner argued that for the purposes of the Covered Business Method (CBM) review, the term "license record" should be construed as "information for verifying a licensed program." This construction was originally proposed by the Patent Owner during district court litigation. Petitioner contended this was the broadest reasonable construction appropriate for the proceeding, in contrast to a narrower construction previously adopted by the district court.

5. Relief Requested

  • Petitioner requests institution of a CBM patent review and cancellation of claims 1-19 of Patent 6,411,941 as unpatentable.