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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`SEGA OF AMERICA, INC., UBISOFT, INC., KOFAX, INC., AND
` CAMBIUM LEARNING GROUP, INC.
`Petitioners
`
`v.
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`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`______________
`
`Case IPR2014-01453
`U.S. Patent 5,490,216
`______________
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`DECLARATION OF DR. VAL DIEULIIS
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`JUNE 8, 2015
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 4
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`2. QUALIFICATIONS ...................................................................................... 5
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 7
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`4. INFORMATION I RELIED UPON ............................................................. 9
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`5. LEGAL STANDARDS .................................................................................10
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`6. THE ’216 PATENT ......................................................................................18
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`6.1 Ordinary Skill in the Art ........................................................................ 20
`6.2 Claim Construction ................................................................................ 21
`6.3 Priority Date .......................................................................................... 22
`6.3.1 The Australian Provisional Applications Disclose “Local
`[Remote] Licensee Unique ID Generating Means” ..................... 23
`6.3.2 The Australian Provisional Applications Disclose “Mode
`Switching Means” ...................................................................... 30
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`7. THE SCHULL REFERENCE (U.S. PATENT NO. 5,509,070) ..................35
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`7.1 Schull is not Prior Art ............................................................................ 36
`7.2 Schull does not disclose a Summation Algorithm or a Summer ............. 36
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`8. LOGAN AND GRUNDY ..............................................................................53
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`8.1 Logan does not anticipate claims 12-14 of the ’216 Patent ..................... 54
`8.1.1 Logan does not anticipate claim 12 of the ’216 Patent ................ 60
`8.2 Logan in view of Grundy does not render obvious claims 15 and
`16 of the ’216 Patent .............................................................................. 64
`8.2.1 Neither Logan nor Grundy discloses checking whether a
`first or subsequent boot takes place as recited in claim 15 .......... 65
`8.2.2 A POSITA would have had no reason to modify Logan
`with Grundy’s Evaluation Mode ................................................. 68
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`9. HAINES AND MANDULEY .......................................................................71
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`9.1 Haines in view of Manduley does not render obvious claims 12-14 ....... 71
`9.1.1 A POSITA would have had no reason to modify Haines
`with Manduley’s Zip Code Information ...................................... 76
`9.1.2 Haines in view of Manduley does not render obvious claim
`12 ............................................................................................... 80
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`9.1.3 Haines in view of Manduley does not render obvious claim
`13 ............................................................................................... 84
`9.1.4 Haines in view of Manduley does not render obvious claim
`14 ............................................................................................... 85
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
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`1. Introduction
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`1.
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`My name is Val DiEuliis, and I have been retained by the Patent
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`Owner, Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively referred to in
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`this declaration as “Uniloc”) as an expert to prepare this declaration in response to
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`the Declaration of Dr. Vijay K. Madisetti, dated September 5, 2014, herein referred
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`to as “Madisetti” or the “Madisetti Declaration.” In his declaration, Dr. Madisetti
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`states that he is “retained by Ubisoft Inc., Sega of America, Inc., Kofax, Inc. and
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`Cambium Learning Group, Inc. and am submitting this declaration to offer my
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`independent expert opinion concerning certain issues raised in the Petition for inter
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`partes Review (‘Petition’).” See Madisetti Declaration, p. 5, ¶ 11.
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`2. Qualifications
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`2.
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`I am an electrical engineer with over 45 years of experience with
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`developing, programming, and analyzing computer algorithms and software. I
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`began my software experience with programming as an undergraduate, starting
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`with FORTRAN and assembly languages in 1968. During my career, I have
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`developed and managed development projects for various applications, including
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`controls, communications, user interfaces, device firmware, handheld devices,
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`medical devices and systems, and test systems for optical and magnetic disk
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`systems, and a position sensor for industrial control valves.
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`3.
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`As a graduate student at the University of Illinois at
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`Urbana-Champaign, I obtained extensive training in the complexity of algorithms,
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`the complexity of databases from an information-theoretic point-of-view,
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`information theory, combinatorics and combinatorial algorithms, the mathematics
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`of error correcting codes and the algorithms for encoding and decoding error
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`correcting codes. In addition, as a part of my graduate research, I created and
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`developed heuristic algorithms and wrote software to synthesize non-linear codes
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`for optimizing the spectra of coded digital communications signals.
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`4.
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`I am experienced with and able to create, read, and interpret firmware
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`and software in C, C++, Java, assembly language, HTML, and other computer
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`programming languages. I have served as an expert witness in multiple cases for
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`which I analyzed computer source code in various languages and testified at ITC
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`hearings and two jury trials concerning my results.
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`5.
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`I received the Ph.D. and M.S. degrees in electrical engineering from
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`the University of Illinois at Urbana-Champaign in 1978 and 1976, respectively,
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`and the B.S. degree in electrical engineering from the University of Notre Dame in
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`1972. I am a Registered Professional Engineer (electrical) in the State of
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`Minnesota, and a Senior Member of the Institute of Electrical and Electronics
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`Engineers. Additionally, I am a co-inventor of two patents.
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`6.
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`I have been an independent engineering consultant, doing business as
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`Electronics Consultants, since 1984. My clients have included 3M, Honeywell,
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`Imation Corporation, and Seagate Technology, among others. Prior to that, I
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`worked for two years as an electrical engineer in the U. S. Army with the U.S.
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`Army Security Agency, during which time I held a Top Secret W/Crypto Access
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`security clearance; and I worked for five years as a research engineer for the 3M
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`Company in St. Paul, Minnesota.
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`7.
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`As an adjunct instructor at the University of Saint Thomas in St. Paul,
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`Minnesota, I developed and presented a lecture on classical linear control theory
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`for graduate students, developed and taught a graduate course on computer
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`networks, and taught an undergraduate analog and digital electronics course to
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`mechanical engineering students.
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`8.
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`I have attached my resume, including a list of my litigation support
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`experience, as Exhibit 1.
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`3. Compensation, Testimony, and Publications
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`9.
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`I am being paid $350 per hour for the time I spend working on this
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`matter. My compensation is not contingent on my performance, the outcome of
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`this IPR, or any issues involved in or related to this IPR.
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`10.
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`During the past four years, I have testified at trial, hearing, or
`
`deposition in the following cases:
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`• Uniloc USA et al. v. Activision Blizzard et al.; United States District Court
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`for the Eastern District of Texas (Tyler); Civil Action No. 6:13-cv-00256-
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`LED; and Uniloc USA v. Electronic Arts, Inc.; Civil Action No.
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`6:13-cv-259-LED; Nelson Bumgardner Casto and Carter, Scholer, Arnett,
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`Hamada, and Mockler on behalf of Uniloc USA et al.; 2013-2014. I testified
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`at three depositions and a jury trial.
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`• In the Matter of Certain Optical Disc Drives, Components thereof, and
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`Products Containing Same; U.S.I.T.C. Investigation No. 337-TA-897;
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`Optical Devices, LLC v. Lenovo et al.; O’Melveny & Myers on behalf of
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`Samsung, Kenyon & Kenyon on behalf of Lenovo, Greenberg Traurig on
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`behalf of LG Electronics, McDermott Will & Emery on behalf of Nintendo
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`and Panasonic, DLA Piper on behalf of Toshiba, and Quinn Emanuel
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`Urquhart & Sullivan on behalf of MediaTek; 2013-2014. I testified at a
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`deposition.
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`• Taser International, Inc. v. Karbon Arms, LLC; United States District Court
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`for the District of Delaware; Civil Action No. 1:11-cv-426-RGA; Smith,
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`Gambrell & Russell, LLP, on behalf of Karbon Arms, 2013. I testified at a
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`deposition.
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`• Hy-Ko Products Company, et al. v. The Hillman Group, Inc.; United States
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`District Court for the Northern District of Ohio (Eastern Division); Civil
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`Action No. 5:08-cv-1961; Thompson Hine and Steve Kaufman and
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`Company, on behalf of Hy-Ko Products Company, et al., 2012. I testified at
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`a deposition.
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`• Taser International, Inc. v. Stinger Systems, Inc., United States District
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`Court for the District of Arizona; Civil Action No. CV-07-0042-PHX-JAT;
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`Murphy & King, LLC, on behalf of Stinger Systems, Inc., 2011. I testified
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`at a deposition and at a hearing regarding an injunction dispute.
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`• Convolve, Inc. v. Dell, Inc., et al.; United States District Court for the
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`Eastern District of Texas (Marshall Division); Civil Action No. 2:08-cv-244;
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`Robins, Kaplan, Miller & Ciresi on behalf of Convolve, Inc., 2010-2011. I
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`testified at a deposition and a jury trial.
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`11.
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`I have had no publications in the past 10 years.
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`4. Information I Relied Upon
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`12.
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`In order to arrive at my opinions, I have reviewed numerous
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`documents, including the Madisetti Declaration, the references he cites in his
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`declaration, and the references he lists in his paragraph 11 on pages 5-6. In
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`addition, I have considered the materials listed below
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`1
`
`:
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`• Petition for Inter Partes Review Case No. IPR2014-01453
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`• Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.107(a),
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`IPR2014—1453, December 31, 2014
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`• Memorandum Opinion and Order, U.S. District Court for the Eastern
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`District of Texas (Tyler Division), Case No. 6:13-cv-256, November 17,
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`2014. [Markman Order – Uniloc v. Activision, et al.]
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`• Opinion and Order, U.S. District Court for the District of Rhode Island,
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`Case No. 03-440 S, October 19, 2007 [granting summary judgment]
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`• Decision, U.S. Court of Appeals for the Federal Circuit, Case 2008-1121,
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`August 7, 2008
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`• McGraw-Hill Dictionary of Scientific and Technical Terms, Fourth Edition,
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`McGraw-Hill, Inc., 1989
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`
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`1
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` The materials in the list may include duplicate references from the Madisetti
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`Declaration.
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`• The American Heritage Dictionary of the English Language, Third Edition,
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`Houghton Mifflin Company, 1992
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`• The New IEEE Standard Dictionary of Electrical and Electronics Terms,
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`Fifth Edition, Institute of Electrical and Electronics Engineers, Inc., 1993
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`• Deposition Transcript, Deposition of Dr. Vijay K. Madisetti, Ph.D., May 15,
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`2015
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`• “A Painless Guide to CRC Error Detection Algorithms,” by Ross N.
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`Williams, August 19, 1993 [Exhibit 5]
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`• “Cyclic Redundancy Check Computation: An Implementation Using the
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`TMS320C54x,” Patrick Geremia, Texas Instruments Application Report
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`SPRA530, April 1999 [Exhibit 6]
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`• “Fast Hashing of Variable-Length Text Strings,” Peter K. Pearson,
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`Communications of the ACM, June 1990, Volume 33, Number 6 [Exhibit 7]
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`5. Legal Standards
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`13.
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`I have been informed of certain legal rules, standards, or requirements
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`that I accept for the purpose of my analysis of the opinions and conclusions set
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`forth in the Madisetti Declaration.
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`14.
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`I understand that certain criteria must be satisfied for a particular
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`reference to be considered as “prior art” used to anticipate a claim, some of which
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`are discussed in the following paragraphs.
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`15.
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`If a claimed invention was patented or described in a printed
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`publication anywhere in the world before the date of invention by the inventor,
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`then that patent or printed publication qualifies as a prior art reference to the
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`asserted patent.
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`16.
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`If a claimed invention was patented or described in a printed
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`publication anywhere in the world more than one year prior to the filing or other
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`priority date of the patent application, then that patent or printed publication
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`qualifies as a prior art reference to the asserted patent.
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`17.
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`If the invention was described in a patent granted on an application for
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`patent by another filed in the United States before the invention by the applicant
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`for patent, then that patent qualifies as a prior art reference to the asserted patent. I
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`understand that the filing of a patent application serves as constructive reduction to
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`practice of the subject matter described in the application if it is adequately
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`described in the specification.
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`18.
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`An application for patent for an invention filed in this country by any
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`person who has, or whose legal representatives or assigns have, previously
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`regularly filed an application for a patent for the same invention in Australia, shall
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`have the same effect as the same application would have if filed in this country on
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`the date on which the application for patent for the same invention was first filed in
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`Australia, if the application in this country is filed within twelve months from the
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`earliest date on which such foreign application was filed.
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`19.
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`I understand that a patent must contain a written description of the
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`invention. It is also my understanding that, in order for a patent claim to be
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`entitled to the filing date of an earlier-filed foreign or U.S. parent application, the
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`parent application also must contain a written description of the claimed invention.
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`20.
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` It is my understanding that the requirement of a written description is
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`met if the patent specification describes the claimed invention in sufficient detail
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`such that one skilled in the art can reasonably conclude that the inventor had
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`possession of the claimed invention at the time the invention was made. The
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`analysis of the written description requires an objective inquiry into the four
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`corners of the specification from the perspective of a person of ordinary skill in the
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`art. The level of detail required to satisfy the written description requirement
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`varies depending on the nature and scope of the claims and on the complexity and
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`predictability of the relevant technology.
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`21.
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`The written description requirement is satisfied by the patentee's
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`disclosure of such descriptive means as words, structures, figures, diagrams,
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`formulas, etc., that fully set forth the claimed invention. An inventor does not have
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`to disclose an actual reduction to practice in the specification to comply with the
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`written description requirement.
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`22.
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`A description of the structure to support a means-plus-function claim
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`must describe and enable at least one means for carrying out the claimed function,
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`however, there is no requirement that all means capable of carrying out the recited
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`function must be disclosed in the specification.
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`23.
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`A description of the functions that a software program is to perform is
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`sufficient to satisfy the written-description requirement of section 112. A patent
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`specification should not be cluttered up by the verbatim listing of source code. A
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`description of the functions performed by a computer program, rather than the
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`actual computer code listing, is generally sufficient to satisfy an applicant's
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`disclosure requirements.
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`24.
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`The sufficiency of the written-description requirement must be judged
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`as of the filing date of the application based on what the language of the
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`specification would have meant to one of ordinary skill in the art as of that date.
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`25.
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`Under Section 102 (35 U.S.C. §102), a patent claim may be held
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`invalid if it is “anticipated” by the prior art. In order to prove anticipation of a
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`claim under Section 102, each and every limitation of a claim must be disclosed in
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`a single prior art reference (e.g., prior invention, prior publication, prior public use,
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`or prior sale) such that it enables a person of ordinary skill in the art to make and
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`use the claimed invention. The disclosure in the prior art reference does not have
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`to use exact or similar words as the claim, but all of the limitations of the claim
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`must be disclosed, so that a person of ordinary skill in the art using that single
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`reference would be able to make and use at least one embodiment of the claimed
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`invention. In other words, it must sufficiently describe the claimed invention to
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`have placed the public in possession of it.
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`26.
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`I also understand that if a single prior art reference does not expressly
`
`teach each element or limitation of a claim, then the reference anticipates the claim
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`only if a person having ordinary skill in the art at the time the claimed invention
`
`was made would understand how the element or limitation that is not expressly
`
`taught is necessarily present in the prior art reference. I understand that this is
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`referred to as inherency. I further understand that an inherent limitation is one that
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`is necessarily present and not one that may be established by probabilities or
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`possibilities. That is, an element or limitation is not inherently disclosed by the
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`mere fact that a certain thing may result from a given set of circumstances. I also
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`understand that while the inherent disclosure requirement presupposes the
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`knowledge of one skilled in the art at the time of the invention, that presumed
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`knowledge does not allow one to read into the prior art reference teachings that are
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`not there, and an expert's conclusory testimony, unsupported by the documentary
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`evidence, cannot supplant the requirement of anticipatory disclosure in the prior art
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`reference itself.
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`27.
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`I also understand that in order for a single prior art reference to
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`anticipate a claimed invention, that reference must not only disclose all of the
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`limitations of the claimed invention, but also be enabling. I understand a reference
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`to be enabling when its disclosures or teachings are sufficient to allow one having
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`ordinary skill in the art at the time to make and use the claimed invention without
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`undue experimentation. It is my understanding that the enablement requirement is
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`stated as follows in the patent statute:
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`The specification shall contain a written description of the
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`invention, and of the manner and process of making and using
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`it, in such full, clear, concise, and exact terms as to enable any
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`person skilled in the art to which it pertains, or with which it is
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`most nearly connected, to make and use the same, and shall set
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`forth the best mode contemplated by the inventor of carrying
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`out his invention.
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`(35 U.S.C. § 112, ¶ 1) (Emphasis added.)
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`
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`28.
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`I understand that the perspective of the enablement inquiry is a person
`
`having ordinary skill in the art, and the relevant time is the filing date of the
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`application leading to the patent.
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`29.
`
`I understand that a patent claim is not enabled if undue
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`experimentation would be required to practice it. To determine whether a undue
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`experimentation would be required, courts look at a variety of factors, including
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`(1) the quantity of experimentation necessary, (2) the amount of direction or
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`guidance presented, (3) the presence or absence of working examples, (4) the
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`nature of the invention, (5) the state of the prior art, (6) the relative skill of those in
`
`the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the
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`claims. I understand that these are called the “Wands factors.”
`
`30.
`
`It is my understanding that some of the claims under review are
`
`“means plus function” claims, which must be construed to cover the corresponding
`
`structure described in the specification, and equivalents thereof. Just as a patentee
`
`who seeks to prove infringement of a means plus function claim must provide a
`
`structural analysis by demonstrating that the accused device has the identified
`
`corresponding structure or an equivalent structure, a challenger who seeks to
`
`demonstrate that a means-plus-function limitation was present in the prior art must
`
`prove that the corresponding structure, or an equivalent, was present in the prior
`
`art.
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`31.
`
`Under Section 103 (35 U.S.C. §103), even if the claimed subject
`
`matter is not identically disclosed or described in a single prior art reference, a
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`patent claim may be held invalid if the differences between the claimed subject
`
`matter and the prior art are such that the claimed subject matter as a whole would
`
`have been “obvious” to a person of ordinary skill in the art at the time of invention.
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`The question of obviousness requires a two-step analysis. First, the challenged
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`claim must be properly construed. Second, the properly construed claim must be
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`compared against the prior art to determine whether the prior art renders the
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`claimed invention obvious.
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`32.
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`Under § 103, the scope and content of the prior art are to be
`
`determined; differences between the prior art and the claims at issue are to be
`
`ascertained; and the level of ordinary skill in the pertinent art resolved. Against
`
`this background, the obviousness or non-obviousness of the subject matter is
`
`determined.
`
`33.
`
`In addition, in accordance with the KSR Int’l Co. v. Teleflex, Inc. U.S.
`
`Supreme Court decision, when determining if a patent claim is obvious, as a
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`helpful insight there may be consideration of whether there exists some teaching,
`
`suggestion, or motivation that would have led a person of ordinary skill in the art
`
`to combine the prior art teachings in such a manner to arrive at the claimed
`
`invention. For example, the teaching, suggestion, or motivation to combine may
`
`be found in: (a) the prior art references; (b) the knowledge of a person of ordinary
`
`skill in the art including inferences and creative steps that a person of ordinary skill
`
`in the art would employ; or (c) the nature of the problem to be solved, or any other
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`problems known in the field addressed by the patent.
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`34.
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`The determination of obviousness must be done based on the
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`knowledge possessed by one of ordinary skill in the art at the time when the
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`invention was made.
`
`35.
`
`There must be an articulated reasoning with some rational
`
`underpinning to support a conclusion that a person of ordinary skill in the art at the
`
`time of the invention would have combined the references.
`
`36.
`
`For a prior art reference, or a combination of references, to render a
`
`claimed invention obvious, one of ordinary skill in the art at the time the invention
`
`was made must have expected a reasonable chance of success in applying the
`
`teachings of the references to arrive at the claimed invention.
`
`
`6. The ’216 Patent
`
`
`37.
`
`U.S. Patent No. 5,490,216 (the ’216 patent), titled System for software
`
`registration, the patent under review in this IPR, was issued to inventor Frederic B.
`
`Richardson, III, on February 6, 1996, after being examined a first time by USPTO
`
`Examiner David Cain. Upon a request for reexamination by Microsoft filed in
`
`January, 2010, the ‘216 Patent was examined a second time by a panel of three
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`USPTO Examiners– primary examiner Matthew Heneghan, his supervisor Jessica
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`Harrison, and a conferee – and confirmed with no claim amendments. In another
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`reexamination request filed in March, 2012, by an anonymous third party, the ‘216
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`Patent was examined by the USPTO a third time, by another panel of three USPTO
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`Examiners– primary examiner Andre Nalven, his supervisor Daniel Ryman, and
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`conferee Ovidio Escalante – and confirmed, yet again, with no claim amendments.
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`In sum, the claims of the ‘216 Patent have been examined by seven different
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`USPTO Examiners who all concluded the same thing – all of its claims are valid.
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`It is my understanding that the Patent Owner Uniloc currently owns the rights to
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`the ’216 patent.
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`38.
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`The ’216 patent is generally directed to “systems for software
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`registration and, more particularly, to improvements in arrangements where
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`software is transferable by media such as magnetic disks, CD ROMS and the like.”
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`See e.g. ’216, col. 1:5-8. Specifically, the invention of the ’216 patent “is designed
`
`and adapted to allow digital data or software to run in a use mode on a platform if
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`and only if an appropriate licensing procedure has been followed.” See ’216 col.
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`2:52-55. The claimed system includes “an algorithm adapted to generate a
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`registration number which is unique to an intending licensee of the digital data
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`based on information supplied by the licensee which characterizes the licensee.”
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`See ’216 col. 2:66 – col. 3:2. Furthermore, the algorithm “is duplicated at a remote
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`location on a platform under the control of the licensor or its agents and
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`communication between the intending licensee and the licensor or its agent is
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`required so that a matching registration number can be generated at the remote
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`location for subsequent communication to the intending licensee as a permit to
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`licensed operation of the digital data in a use mode.” See ’216 col. 3:3-9
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`6.1
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`39.
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`Ordinary Skill in the Art
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`In my opinion a person of ordinary skill in the art (POSITA) disclosed
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`in the ’216 patent as of its priority date would have a bachelor’s degree in electrical
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`engineering or computer science or two years of experience in software
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`development. Alternatively, a person with equivalent training and/or experience,
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`such as programming training and programming experience may qualify.
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`40.
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`On page 7 in paragraph 12 of his declaration, Dr. Madisetti states that
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`he understands the Patent Owner has opined in other litigations that a person of
`
`ordinary skill in the art has a “Bachelor’s Degree or equivalent, in Electrical
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`Engineering or Computer Science, or one to two years of experience in software
`
`development or the equivalent work experience.” Dr. Madisetti further states “I
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`have no reason to disagree with this level of ordinary skill in the art.”
`
`41.
`
`It appears to me that there is no dispute concerning the qualifications
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`of a person of ordinary skill in the art because Dr. Madisetti’s characterization of
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`the Patent Owner’s opinions is consistent with my definition and Dr. Madisetti
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`does not disagree with it.
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`42.
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`I base my opinion on my education and experience, and my study of
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`the ’216 patent and its prosecution histories. I have considerably more experience
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`and expertise than the POSITA, and my opinions regarding the level of ordinary
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`skill in the art are based upon this understanding and my own experience in the
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`field. I have considered the way in which a POSITA would have understood the
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`’216 patent on its priority date, and I offer my opinions on that basis.
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`6.2
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`43.
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`Claim Construction
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`The Rhode Island Court issued a Markman Order in Uniloc v.
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`Microsoft on August 22, 2006. In its Decision to authorize the institution of Inter
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`Partes Review, dated March 10, 2015, the Patent Board agreed with the Rhode
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`Island Court’s claim constructions. See PTAB Decision of March 10, 2015, p. 7.
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`The Board also provided a table summarizing the claim constructions, which I
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`include in Exhibit 8, attached to this declaration.
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`2
`
`
`
`
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`2
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` I have included language from the Rhode Island Markman order that is omitted in
`
`the PTAB table; however, I have reproduced the PTAB construction of ‘wherein
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`said registration system is replicated at the registration authority,” which is found
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`in the Rhode Island Court’s summary judgment order of October 19, 2007,
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`pp. 27-29.
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`44.
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`The United States Court of Appeals for the Federal Circuit also
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`construed select claims in its opinion of August 7, 2008, in case number 2008-1121
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`and further clarified those constructions in its opinion of January 4, 2011, in case
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`number 2010-1035, -1055.
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`45.
`
`In the Federal Circuit’s Decision of January 4, 2011, for case numbers
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`2010-1035, -1055, the Federal Circuit offered significant commentary on the
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`interpretation of a “summation algorithm.” Particularly relevant to the disputed
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`issues in this IPR, the Federal Circuit stated the following:
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`Declining to limit the construction to simple addition does not
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`also extend the claims to any algorithm that includes a plus
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`sign; the construction retains its explicit limitation that the
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`algorithm used be fairly capable of categorization as "a
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`summation algorithm."
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`(CAFC2011, pp. 20-21)
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`
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`Priority Date
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`I understand that Uniloc states that the priority dates of the ’216
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`6.3
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`46.
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`Patent are September 21, 1992, and October 26, 1992, the filing dates of Australian
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`provisional application Nos. PL4842 and PL5524. In ¶ 23 on page 12,
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`Dr. Madisetti opines that claims 1-11 and 17-20 of the ’216 Patent are not
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`supported by either PL4842 or PL5524 because he did not see in the provisional
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`applications any structure for performing the functions of “licensee unique ID
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`generating means” or “mode switching means.” I disagree with Dr. Madisetti as I
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`explain in the following paragraphs in this section.
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`
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`6.3.1
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`
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`47.
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`The Australian Provisional Applications Disclose “Local [Remote]
`Licensee Unique ID Generating Means”
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`The construction of the term “licensee unique ID” is “a unique
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`identifier associated with a licensee.” See e.g., Exhibit 8 (Claim Constructions).
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`Furthermore, the term “licensee unique ID generating means” has been construed
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`as a means-plus-function term as in the following:
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`3
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`
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`Function: to generate a local or remote licensee unique ID
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`Structure: a summation algorithm or a summer and equivalents
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`thereof
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`
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`
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`48.
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` The provisional application PL4842 discloses a “security key,” which
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`is