United States Court of Appeals
for the Federal Circuit
______________________
ANCORA TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
APPLE, INC.,
Defendant-Cross Appellant.
______________________
2013-1378, -1414
______________________
Appeals from the United States District Court for the
Northern District of California in No. 11-CV-6357, Judge
Yvonne Gonzalez Rogers.
______________________
Decided: March 3, 2014
______________________
JOHN S. LEROY, Brooks Kushman P.C., of Southfield,
Michigan, argued for plaintiff-appellant. With him on the
brief were MARK A. CANTOR, MARC LORELLI, and JOHN P.
RONDINI.
DEANNE E. MAYNARD, Morrison & Foerster LLP, of
Washington, DC, argued for defendant-cross appellant.
With her on the brief were BRIAN R. MATSUI and NATALIE
R. RAM, OF WASHINGTON, DC; MICHAEL A. JACOBS,
RICHARD S.J. HUNG, and FRANCIS C. HO, of San Francisco,
California; and BITA RAHEBI, of Los Angeles, California.
______________________
2 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
Before RADER, Chief Judge, TARANTO, and CHEN, Circuit
Judges.
TARANTO, Circuit Judge.
Ancora Technologies, Inc., owns U.S. Patent No.
6,411,941, which claims methods for verifying that a
software program on a computer is not there without
authorization, but is licensed to be there. In December
2010, Ancora sued Apple Inc., alleging that products
running Apple’s iOS operating system infringed the ’941
patent. The United States District Court for the Northern
District of California construed the claims. Ancora
Techs., Inc. v. Apple Inc., 11-CV-06357, 2012 WL 6738761
(N.D. Cal. Dec. 31, 2012). Ancora stipulated to summary
judgment of non-infringement under the district court’s
construction of the claim term “program.” The district
court subsequently entered final judgment dismissing all
claims and counterclaims. Ancora appeals the district
court’s construction of “program,” while Apple cross-
appeals the district court’s holding that the terms “vola-
tile memory” and “non-volatile memory” are not indefi-
nite. We affirm in part, reverse in part, and remand.
BACKGROUND
The ’941 patent, entitled “Method of Restricting Soft-
ware Operation within a License Limitation,” describes a
method of preventing unauthorized software use by
checking whether a software program is operating within
a license and stopping the program or taking other reme-
dial action if it is not. The specification states that meth-
ods for checking license coverage of software were known
in the art at the time the inventors applied for the ’941
patent. But some of those methods were vulnerable to
hacking, the specification observes, while others were
expensive and inconvenient to distribute. ’941 patent, col.
1, lines 19-32.
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 3
The specification describes a method that it says over-
comes those problems. In particular, it discloses using the
memory space associated with the computer’s basic in-
put/output system (BIOS), rather than other memory
space, to store appropriately encrypted license infor-
mation to be used in the verification process. See, e.g., id.,
col. 1, line 46, through col. 2, line 5; id., col. 4, lines 45-48;
id., col. 5, lines 19-24. It states that, while the contents of
the BIOS memory space may be modified, the level of
programming expertise needed to do so is unusually high,
and the risk of accidentally damaging the BIOS and
thereby rendering the computer inoperable “is too high of
a risk for the ordinary software hacker to pay.” Id., col. 3,
lines 4-14. Thus, the inventors stated that their method
makes use of the existing computer hardware (eliminat-
ing the expense and inconvenience of using additional
hardware), while storing the verification information in a
space that is harder and riskier for a hacker to tamper
with than storage areas used by earlier methods.
Claim 1, the only independent claim Ancora asserts,
is representative:
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 accommodat-
ing data that includes at least one license rec-
ord,
4 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
verifying the program using at least the verifi-
cation structure from the erasable non-
volatile memory of the BIOS, and
acting on the program according to the verifica-
tion.
Id., col. 6, line 59, through col. 7, line 4.
The parties have not meaningfully disagreed about
the ordinary meaning of the claim terms at issue on
appeal: “program,” “volatile memory,” and “non-volatile
memory.” But Apple has relied on examples in the speci-
fication, as well as statements by the applicants and the
examiner during prosecution, to argue that the terms do
not have those ordinary meanings in this patent. Specifi-
cally, Apple has argued that the term “program” (which is
to be verified for authorization under a license) is limited
to an application program, i.e., one that relies on an
operating system in order to run, thus excluding an
operating system itself. Apple also has argued that the
terms “volatile memory” and “non-volatile memory” are
indefinite because an example given in the specification is
irreconcilable with the ordinary meaning of the terms.
The district court agreed with Apple on the first point
(finding non-infringement on that basis) but disagreed
with Apple on the second (rejecting invalidity for indefi-
niteness on that basis). Both sides appeal. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
Claim construction and indefiniteness are matters of
law that this court reviews de novo. Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998); Praxair,
Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008).
A
Ancora challenges the district court’s conclusion that
the term “program” is limited to application programs,
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 5
thereby excluding operating systems from the class of
programs that the claimed method checks for authoriza-
tion under a license. We agree with Ancora. A claim term
should be given its ordinary meaning in the pertinent
context, unless the patentee has made clear its adoption
of a different definition or otherwise disclaimed that
meaning. See, e.g., Thorner v. Sony Computer Entm’t Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). There is no
reason in this case to depart from the term’s ordinary
meaning.
Apple nowhere seriously disputes that the ordinary
meaning of the word “program” in the computer context
encompasses both operating systems and the applications
that run on them (as well as other types of computer
programs). And the district court explained that, alt-
hough the term “program” may have many different
meanings depending on the context, “to a computer pro-
grammer” a program is merely a “set of instructions” for a
computer. Ancora, 2012 WL 6738761, at *7. That clear
meaning governs here, we conclude, because there is
nothing sufficient to displace it.
The claims themselves point against a narrowing of
the term “program” to application programs. Claim 1
recites a “method of restricting software operation” (if
license coverage of the software cannot be verified) and
refers to the restricted software simply as a “program.”
’941 patent, col. 6, line 59, through col. 7, line 4. In con-
trast, independent claim 18, which is not asserted here,
recites a “method for accessing an application software
program” and then repeatedly refers to the “application
software program.” Id., col. 8, lines 31-52 (emphases
added). Although claim 18 is not a dependent claim, and
claim differentiation as an interpretive principle is often
of limited importance, the difference in terminology tends
to reinforce, rather than undermine, adoption of the broad
ordinary meaning of “program” by itself.
6 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
Nothing in the specification clearly narrows the term
“program.” The general disclosure in the specification
refers to the to-be-verified software as a “software pro-
gram,” “software,” or a “program,” without limiting the
subject matter to particular types of programs. See, e.g.,
id., col. 1, lines 7, 40; id., col. 2, lines 63, 66. The only
instances in which the specification discusses using the
claimed invention to verify application programs are
found in examples that the specification makes clear are
not limiting. See, e.g., id., col. 1, line 45 (characterizing
the example at col. 1, line 46, through col. 2, line 59, as “a
specific non-limiting example”); id., col. 3, line 33 (describ-
ing a “preferred embodiment”); id., col. 4, line 66 (charac-
terizing the preferred embodiment described in columns 5
and 6 as a “non-limiting example only”). Such examples
are “not sufficient to redefine the term . . . to have any-
thing other than its plain and ordinary meaning.” IGT v.
Bally Gaming Int’l, Inc., 659 F.3d 1109, 1118 (Fed. Cir.
2011). Thus, nothing in the specification would lead one
of ordinary skill in the art to understand that the claims
use “program” in a sense narrower than its ordinary
meaning.
The prosecution history requires more extended dis-
cussion, but it too does not require a meaning that substi-
tutes for the ordinary one. In reading the prosecution
history, it is important to keep in mind the distinction
between a program whose coverage by a license is being
checked and a piece of software that embodies the pa-
tent’s claimed method of checking. The term “program” in
the claims refers exclusively to the to-be-verified program.
Indeed, neither the specification nor the claims use the
term “program” to refer to software (a set of instructions)
that, when run, performs the claimed verification steps,
instead referring to the invention as a “method,” “system,”
or, in one instance, a “license verifier application.” See,
e.g., ’941 patent, col. 1, lines 6-8; id., col. 2, line 14.
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 7
The prosecution-history statements that Apple cites
are focused on the verifying software, not clearly (or in
any event relevantly) on the to-be-verified program, and
so cannot support Apple’s narrowing argument. Specifi-
cally, the applicants distinguished their invention over a
combination of two references: one disclosed storage in the
BIOS memory area by the BIOS software itself; the other
disclosed software implemented in or through an operat-
ing system. The applicants explained that their invention
differed from the prior art in that it both operated as an
application running through an operating system and
used the BIOS level for data storage and retrieval—a
combination that was not previously taught and that an
ordinarily skilled application writer would not employ:
[T]here is no suggestion or motivation to combine
Misra and Ewertz in the manner suggested in the
Office Action. BIOS is a configuration utility.
Software license management applications, such
as the one of the present invention, are operating
system (OS) level programs. . . . [W]hen BIOS is
running, the computer is in a configuration mode,
hence OS is not running. Thus, BIOS and OS lev-
el programs are normally mutually exclusive.
...
[T]he present invention proceeds against conven-
tional wisdom in the art. Using BIOS to store ap-
plication data such as that stored in Misra’s local
cache for licenses is not obvious. The BIOS area
is not considered a storage area for computer ap-
plications. An ordinary skilled artisan would not
consider the BIOS as a storage medium to pre-
serve application data for at least two reasons.
First, . . . [a]n ordinary person skilled in the art
makes use of OS features to write data to storage
mediums. There is no OS support whatsoever to
write data to the system BIOS. Therefore, an or-
8 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
dinary person skilled in the art would not consider
the BIOS as a possible storage medium. . . .
Second, no file system is associated with the
BIOS. . . . This is further evidence that OS level
application programmers would not consider the
BIOS as a storage medium for license data.
Amendment dated Feb. 5, 2002, at 6-7, in Appl. No.
09/164,777 (emphasis added).
The reference to the invention as a “license manage-
ment application[]” and the identification of persons of
ordinary skill in the relevant art as “application pro-
grammers” who “make[] use of OS features” demonstrate
that the applicants understood that their claimed meth-
ods would be implemented as application software, rather
than lower-level system software. But those representa-
tions, made in distinguishing prior art, concerned soft-
ware that implemented the invented method. The to-be-
verified software is different from the verifying software.
The statements from the prosecution history on which
Apple relies do not say that the program being verified
must be an application program. Even the reference to
“application data” in describing Misra, even if read to
refer to data about a to-be-verified program (which is not
clear), does not distinguish Misra, or limit the present
claims, on that basis. 1
Other prosecution statements cited by Apple no more
establish the narrowing it urges. Although Apple makes
much of language about storing “application data” in the
BIOS area, Amendment dated Feb. 5, 2002, at 7, nothing
in the applicants’ statements indicates that the “applica-
1 We do not have before us a contention that the
verification software must be an “application.” We do not
address whether such a contention matters in this case or
has been preserved.
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 9
tion” in question is the to-be-verified software, as opposed
to the verifying software; and in any event, the language
does not rise to the level of a disclaimer regarding nature
of the to-be-verified software. Likewise, although the
examiner stated in his reasons for allowance that “the
closest prior art systems, singly or collectively, do not
teach licensed programs running at the OS level interact-
ing with a program verification structure stored in the
BIOS,” Notice of Allowability dated Feb. 20, 2002, at 4, in
Appl. No. 09/164,777, that statement is at worst a slip:
under the claims, it is indisputably the verifying software
that interacts with the verification structure. In any
event, the statement is not the applicants’ statement. See
Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1345
(Fed. Cir. 2005) (remarks in the examiner’s statement of
reasons for allowance insufficient to limit claim scope).
And, as quoted above, the applicants were clear that the
OS-level language referred to the verifying software.
Nor, finally, did the applicants represent in the prose-
cution history, or elsewhere, that verification must occur
before the to-be-verified program is loaded (so that soft-
ware for performing verification that depended on a
running operating system could not verify the operating
system). To the contrary, the first step in claim 1 is
“selecting a program residing in the volatile memory,”
’941 patent, col. 6, line 63, and the examiner understood
that “software would have to be loaded a priori in order to
reside in volatile memory.” Office Action dated Jan. 15,
2002, at 3, in Appl. No. 09/164,777 (emphasis added). The
specification does describe an embodiment in which the
verifying software is “a priori running in the computer”
when a to-be-verified program is loaded into memory.
’941 patent, col. 2, lines 14-15. But that is part of what is
merely a “non-limiting example” that is “by no means
binding.” Id., col. 1, line 45; id., col. 2, line 61.
We conclude that the district court erred in construing
“program” to mean “a set of instructions for software
10 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
applications that can be executed by a computer.” An-
cora, 2012 WL 6738761, at *10 (emphasis added).
B
In its cross-appeal, Apple challenges the district
court’s rejection of its contention that the claims at issue
are invalid because the terms “volatile memory” and “non-
volatile memory” are indefinite. Under what is now 35
U.S.C. § 112(b), a claim must be “sufficiently definite to
inform the public of the bounds of the protected invention,
i.e., what subject matter is covered by the exclusive rights
of the patent.” Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). The Supreme
Court currently is considering how to refine the formula-
tions for applying the definiteness requirement. See
Nautilus, Inc. v. Biosig Instruments, Inc., Sup. Ct. No. 13-
369, cert. granted, 2014 WL 92363 (Jan. 10, 2014). In this
case, we think that we can reject the indefiniteness chal-
lenge without awaiting the Court’s clarification. However
other circumstances may be evaluated, it suffices to reject
the challenge in this case that the claim language and the
prosecution history leave no reasonable uncertainty about
the boundaries of the terms at issue, even considering
certain aspects of the specification that could engender
confusion when read in isolation.
Most importantly, there is no dispute that the terms
“volatile memory” and “non-volatile memory” have a
meaning that is clear, settled, and objective in content.
Both parties and the district court agreed that, as a
general matter, “[t]o one of ordinary skill in the art, a
volatile memory is memory whose data is not maintained
when the power is removed and a non-volatile memory is
memory whose data is maintained when the power is
removed.” Ancora, 2012 WL 6738761, at *4. That mean-
ing leaves the relevant public with a firm understanding
of the scope of the claim terms, unless something excep-
tional sufficiently supplants that understanding. Apple
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 11
argues that the specification does so. We conclude other-
wise.
Apple’s argument rests on the fact that, three times,
the specification uses language referring to a hard disk as
an example of volatile memory. ’941 patent, col. 1, line
21; id., col. 3, line 9; id., col. 4, line 53. All sides agree
that a hard disk maintains data when the power is re-
moved and for that reason is not normally referred to as
“volatile memory.” Apple contends that because “a hard
disk is a quintessential example of non-volatile memory”
and “the specification does not explain how a hard disk
can fall into the category of volatile memory . . . or what
characteristics differentiate volatile from non-volatile
memory . . . a person of ordinary skill would not know
what falls within the scope of the claims.” Cross-
Appellant Br. at 38.
We are not persuaded that Apple’s conclusion is
properly drawn from the passages on which it relies. To
begin with, the terms at issue have so clear an ordinary
meaning that a skilled artisan would not be looking for
clarification in the specification. There is no facial ambi-
guity or obscurity in the claim term. Moreover, the speci-
fication nowhere purports to set out a definition for
“volatile” or “non-volatile” memory, and nothing in it
reads like a disclaimer of the clear ordinary meaning.
Under our claim-construction law, a clear ordinary mean-
ing is not properly overcome (and a relevant reader would
not reasonably think it overcome) by a few passing refer-
ences that do not amount to a redefinition or disclaimer.
In this case, moreover, a skilled artisan would appre-
ciate that the passages at issue have a possible meaning
that is not (what would be surprising) starkly irreconcila-
ble with the clear meaning of “volatile” and “non-volatile”
memory, which are the claim terms. (The claims do not
mention a hard disk at all, and the only specific example
of “volatile” memory set out in the claims is Random
12 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
Access Memory (RAM), ’941 patent, col. 8, lines 1-2, which
all agree is “volatile” in the ordinary sense.) As the
district court observed, it is well known that a computer’s
hard disk is routinely used as “virtual” memory to provide
temporary storage when there is insufficient RAM to
complete an operation, Ancora, 2012 WL 6738761, at *5,
in which case (it is undisputed) the data become inacces-
sible through the usual means once power is removed
(even if the data can still be found on the hard disk by
more sophisticated means), Cross-Appellant Br. at 50;
J.A. 1672. This explanation for the otherwise-perplexing
example of a hard disk as “volatile” memory finds support
in the specification’s statement that “the volatile memory
is a RAM e.g. hard disk and/or internal memory of the
computer.” ’941 patent, col. 4, lines 53-54 (emphasis
added). Although oddly phrased, the reference to a “hard
disk” as an example of RAM suggests that the patentee
meant to refer to the hard disk only in its capacity as
supplemental memory in conjunction with the main
RAM—rather than to assert, in a passing and indirect
manner, a meaning sharply in conflict with clear usage.
For those reasons, under the demanding standards for
displacing as clear an ordinary meaning as exists in this
case, we doubt that an ordinarily skilled artisan could
have a reasonable uncertainty about the governing scope
of the claims—even before completing the claim-meaning
inquiry by examining the prosecution history. And the
inquiry must, in fact, continue: an ordinarily skilled
artisan must consult the prosecution history to confirm
the proper understanding of a claim term’s meaning,
especially if other aspects of the inquiry raise questions.
See, e.g., Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358,
1366 (Fed. Cir. 2001) (“[T]he prosecution history . . .
should always be consulted to construe the language of
the claims.”); Texas Instruments Inc. v. U.S. Int’l Trade
Comm’n, 871 F.2d 1054, 1063 (Fed. Cir. 1989) (“The
public . . . must look to both the patent specification and
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 13
the prosecution history, especially where there is doubt
concerning the scope of the claims.”). And here, the
prosecution history eliminates any reasonable basis for
thinking that the patent has adopted a meaning different
from the clear ordinary one.
During prosecution, the examiner stated, in a June
22, 2001 office action, that he was “relying on the stand-
ard definition of ‘non-volatile’ memory as memory that is
maintained even when the power is removed from the
storage system” in rejecting the claims as anticipated.
Office Action dated Jun. 22, 2001, at 3, in Appl. No.
09/164,777. In the same office action, the examiner
rejected the claims for indefiniteness because of the
specification references to a hard disk as volatile. Id. at 5-
6. The applicants responded by amending the claims to
restrict the covered non-volatile memory to a memory
area of the computer BIOS and did not dispute the exam-
iner’s understanding of “volatile” and “non-volatile”
memory in their ordinary meaning (for the anticipation
rejection). Amendment dated Nov. 14, 2001, in Appl. No.
09/164,777. The examiner was clearly satisfied both as to
anticipation and as to indefiniteness, even though the
amended claim still referred to “volatile” memory stand-
ing alone (and “non-volatile” areas associated with the
BIOS), because he allowed the amended claims.
Depending on important details, this kind of sequence
has sometimes sufficed for inference of a disclaimer of an
otherwise-clear meaning. See, e.g., Biogen Idec, Inc. v.
GlaxoSmithKline LLC, 713 F.3d 1090, 1097 n.6 (Fed. Cir.
2013) (disclaimer arose where the applicants “let[] stand
an examiner’s narrow characterization of a claim term”
and “adopt[ed] . . . that characterization to overcome the
examiner’s . . . rejection”). Here the question asked of the
prosecution history is much more modest: does it confirm
the clear ordinary meaning by resolving any doubts about
whether the patentee had displaced that meaning in the
specification? We think that the natural meaning of the
14 ANCORA TECHNOLOGIES, INC. v. APPLE, INC.
prosecution history—including satisfaction as to definite-
ness upon making an amendment that effectively made
clear the applicants’ acceptance of the ordinary mean-
ing—is just that confirmation.
Apple invokes a portion of Allen Engineering Corp. v.
Bartell Industries, Inc., 299 F.3d 1336, 1349 (Fed. Cir.
2002), that involved the requirement of 35 U.S.C. § 112(b)
(formerly § 112, ¶ 2) that the claim must claim what the
“applicant regards as his invention.” That requirement is
distinct from the same provision’s requirement that the
claim be sufficiently clear to be definite. See Allen, 299
F.3d at 1348; Solomon v. Kimberly-Clark Corp., 216 F.3d
1372, 1377, 1379 (Fed. Cir. 2000); In re Knowlton, 481
F.2d 1357, 1366 n.7 (CCPA 1973). In any event, this case
is unlike Allen, where the patentee agreed that the claim
language did not match what he regarded as his inven-
tion, as the intrinsic record unambiguously showed, and
this court denied the patentee’s request to reject the claim
language’s clear, ordinary meaning. Here, Ancora em-
braces the claim language’s clear, ordinary meaning, and
for the reasons we have explained, we do not think that
the specification and prosecution history establish that
the applicants regarded their invention as something
contrary to that meaning.
Accordingly, the district court was correct to reject
Apple’s challenge to “volatile memory” and “non-volatile
memory” as indefinite.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s construction of “program” as limited to application
programs, affirm the court’s conclusion that the terms
“volatile memory” and “non-volatile memory” are not
indefinite, and remand.
No costs.
ANCORA TECHNOLOGIES, INC. v. APPLE, INC. 15
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED