IP Law Daily Software restriction method made specific security improvements; not invalid as abstract
Friday, November 16, 2018

Software restriction method made specific security improvements; not invalid as abstract

By Thomas Long, J.D.

A patent claiming methods of limiting a computer’s running of software not authorized for that computer to run described a concrete assignment of specified functions among a computer’s components to improve computer security, and this claimed improvement in computer functionality was patentable, the U.S. Court of Appeals for the Federal Circuit has held. The federal district court in Seattle erred in determining that the claims were directed to an abstract idea and therefore patent-ineligible under 35 U.S.C. §101. The district court’s dismissal of an infringement action in connection with the patent was reversed, and the case was remanded (Ancora Technologies, Inc. v. HTC America, Inc., November 16, 2018, Taranto, R.).

Ancora Technologies, Inc., held U.S. Patent 6,411,941 ("the ’941 patent"), entitled "Method of Restricting Software Operation Within a License Limitation." The ’941 patent purportedly improved on prior art by providing a different method of identifying and restricting an unauthorized software program’s operation. It taught a method and system of preventing the unauthorized use of software by checking whether a software program is licensed and stopping the program if it is not. Ancora brought an infringement action against HTC America and HTC Corporation, and HTC moved to dismiss on the ground that the claims of the ’941 patent were invalid under Section 101. The district court granted the motion to dismiss, concluding that the patent was directed to an abstract idea of controlling software access based on data stored in a particular location and that limitations in the claim did not transform the abstract idea into a patent-eligible concept. Ancora appealed to the Federal Circuit.

The method of the ’941 patent was based on assigning certain functions to particular computer components and having them interact in specified ways. The method relied on the use of a "key" and a "record." A "key," which is "a unique identification code" for the computer, is embedded in the read-only memory (ROM) of the computer’s Basic Input Output System (BIOS) module. The key "cannot be removed or modified," the patent stated. A "record" is a "license record" associated with a particular application, consisting of the author name, program name, and number of licensed users. The asserted innovation related to where the license record is stored in the computer and the interaction of that memory with other memory to check for permission to run a program that is introduced into the computer. A modifiable part of the BIOS memory—not other computer memory—was employed to store the information that can be used, when a program is introduced into the computer, to determine whether the program is licensed to run on that computer. This is not a typical use of BIOS memory, which ordinarily stores programs that assist in start-up of the computer. Using BIOS memory in this fashion, instead of other memory, improves computer security, according to the patent, because hacking BIOS memory is much more difficult than hacking the forms of memory used by prior-art methods of storing license-verification information.

In the Federal Circuit’s view, the method of the ’941 patent made non-abstract improvements to computer technology. "Improving security—here, against a computer’s unauthorized use of a program—can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem," the court said. The claims of the ’941 patent specifically identified how that functionality improvement was effectuated in an unexpected way, by using a structure containing a license record that is stored in a particular, modifiable, non-volatile portion of the computer’s BIOS. The structure in that memory location is used for verification by interacting with the distinct computer memory that contains the program to be verified. The claims addressed the technological problem of license-authorization software’s vulnerability to hacking. This improvement, according to the court, had "the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it." Therefore, it passed muster under step one of the Alice analysis because it did not claim an abstract idea. It was not necessary to go on to the second step of the Alice analysis. Accordingly, the court held that HTC had not shown the ’941 patent’s claims to be invalid under Section 101.

This case is No. 2018-1404.

Attorneys: Marc Lorelli (Brooks Kushman PC) for Ancora Technologies, Inc. Irfan A. Lateef (Knobbe, Martens, Olson & Bear, LLP) for HTC America, Inc. and HTC Corp.

Companies: Ancora Technologies, Inc.; HTC America, Inc.; HTC Corp.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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