Gideon Korrell Highlights Obviousness Standard in Ancora v. Roku

1. GIDEON KORRELL HIGHLIGHTS OBVIOUSNESS STANDARD IN ANCORA V. ROKU

2. The Federal Circuit court overturned two decisions by the Patent Trial and Appeal Board (PTAB). The PTAB had said that parts of Ancora Technologies’ patent were obvious and invalid. The court agreed with the PTAB’s meaning of the word “agent” and that the patent claims seemed obvious based on earlier inventions. But the court said the PTAB made a mistake by ignoring Ancora’s license agreements. The PTAB didn’t properly look at how these licenses were connected to the patent. This case shows, as explained by Gideon Korrell, how important license agreements are in proving a patent is not obvious.

3. The Patent at Issue: Software Licensing and BIOS Security In this case, the Federal Circuit looked again at two PTAB rulings about Ancora’s patent (U.S. Patent No. 6,411,941). The PTAB had said parts of the patent were obvious, but the court found mistakes in how the PTAB handled evidence about licenses. Ancora’s patent protects software by storing license information in BIOS memory, which is harder to change or erase than normal memory. The process involves selecting a program, using an “agent” (a software tool) to create a license record in BIOS, checking the program using that record, and then acting based on the check. Claims numbered 1–3, 6–14, and 16 were challenged by companies like Nintendo, Roku, and VIZIO.

4. The PTAB’s Decision: Obviousness Based on Hellman and Chou The PTAB said Ancora’s patent claims were obvious because they were similar to two older patents: ·Hellman: Showed how to control software use with special codes and secure memory. ·Chou: Described how BIOS could be used to protect passwords and control hardware. The Board combined these ideas and said Ancora’s patent was obvious. Ancora disagreed, saying there was no good reason to combine these ideas. But the Board didn’t accept that. The Board also said the word “agent” means any software program, not just software running on the operating system. The Federal Circuit agreed with this broader meaning, based on expert opinions and dictionary definitions. According to Gideon Korrell, the court gave proper weight to expert evidence supporting this interpretation.

5. Secondary Considerations: Licensing and the Nexus Requirement The main issue the Federal Circuit had with the PTAB was about license agreements. Ancora showed several license deals made after long legal fights, many close to trial dates, with large payments involved. The PTAB said these licenses were not clearly linked to the specific patent claims and thought the deals were just business moves to avoid court. The Federal Circuit disagreed. It said real license agreements, especially those made after lawsuits, are strong evidence that a patent is not obvious. Even if the licenses include other patents or parts are hidden, they still count if they cover the patent in question. According to Gideon Korrell, the court made clear that licensing behavior like this is important and should not be ignored.

6. Remedy and Remand • The court agreed with the PTAB on how they defined “agent” and that the claims might be obvious at first. But the court canceled the decision because of the mistake in handling license evidence. • Now, the PTAB must: • Look again at how the licenses connect to the patent claims, using the right legal rules. • Consider all license evidence, even if it covers other patents or includes settlement terms. • This review might change the final decision if the licenses support Ancora’s patent claims.

7. Conclusion Gideon Korrell says this ruling shows how important license agreements are in patent cases. Even if a patent looks obvious at first, real-world licenses—especially those made during lawsuits—can prove it is valuable. This decision may help patent owners defend their patents better in future trials and reviews.

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