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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`SEGA OF AMERICA, INC., UBISOFT, INC., KOFAX, INC. AND
`CAMBIUM LEARNING GROUP, INC.
`Petitioners
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`____________
`
`Case No. IPR2014-01453
`Patent 5,490,216
` ____________
`
`
`
`
`DECLARATION OF DR. VIJAY K. MADISETTI
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`Petitioners Ex. 1007 Page 1
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`I, Vijay K. Madisetti, hereby declare the following:
`I.
`BACKGROUND AND EDUCATION
`1. My name is Vijay Madisetti, and I am a Professor of Electrical and
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`Computer Engineering at Georgia Institute of Technology (“Georgia Tech”) in
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`Atlanta, GA.
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`2.
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`I received a Bachelor of Technology in electronics and Electrical
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`Communications Engineering from the Indian Institute of Technology (IIT) in
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`1984. I received my Ph.D. in Electrical Engineering and Computer Sciences
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`(EECS) from the University of California, Berkeley in 1989. I am currently a
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`tenured full Professor at Georgia Institute of Technology, and I have been on the
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`faculty of Georgia Institute of Technology since 1989. I have authored or co-
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`authored over 100 reference articles in the area of electrical engineering. I have
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`also authored, co-authored, or edited several books in the areas of electrical
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`engineering, communications, signal processing, communications, and computer
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`engineering, including VLSI Digital Signal Processors (1995) and The Digital
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`Signal Processing Handbook (First & Second Editions) (1998, 2012), and recently,
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`Cloud Computing (2013). Although I discuss my expert qualifications in more
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`detail below, I also attach as [Appendix A] a recent and complete curriculum
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`vitae, which details my educational and professional background and includes a
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`listing of most of my publications.
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`3.
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`I have been involved in research and technology in the area of
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`distributed computer and information systems since the late 1980s, and my work in
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`this area has focused on secure and efficient distribution of information over
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`networks, synchronization of updates across a distributed network, and
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`multiprocessing systems and tools.
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`4.
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`In 1987, at UC Berkeley, I worked on implementing a globally
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`distributed file system, called GAFFES, to facilitate information sharing in a global
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`network of workstations. GAFFES provided four services to handle naming,
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`replication and caching, security and authentication, and file access primitives.
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`GAFFES outlined features of access in terms of users and their roles, and in terms
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`of beliefs and policies. Every file in GAFFES has at least one role, and the owner
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`of a role determines the roles that may use that role to operations on software files.
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`5.
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`I have authored, co-authored, or edited several books in the past
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`twenty years, including:
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`• VLSI Digital Signal Processors
`Madisetti, V.K.
`• Quick-Turnaround ASIC Design in VHDL
`Romdhane, M., Madisetti, V.K., Hines, J.
`• The Digital Signal Processing Handbook (First Edition)
`Madisetti, V. K., Williams, D. (Editors)
`• VHDL: Electronics Systems Design Methodologies.
`Madisetti, V. K. (Editor)
`• Platform-Centric Approach to System-on-Chip (SoC)
`Design.
`Madisetti, V. K., Arpnikanondt, A.
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`• The Digital Signal Processing Handbook – Second Edition.
`Madisetti, V. K. (2009/2010)
`• Cloud Computing: A Hands-On Approach
`A Bahga, V. Madisetti (2013)
`In the past decade I have authored several peer-reviewed papers in the
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`6.
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`area of computer and software design, and these include:
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`• V. Madisetti, et al: “The Georgia tech Digital Signal Multiprocessor,
`IEEE Transactions on Signal Processing, Vol 41, No. 7, July 1993
`• V. Madisetti et al, “Rapid Prototyping on the Georgia Tech Digital
`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol
`42, March 1994.
`• V. Madisetti, “Reengineering legacy embedded systems”, IEEE
`Design & Test of Computers, Vol 16, Vol 2, 1999
`• V. Madisetti et al, “Virtual Prototyping of Embedded Microcontroller-
`based DSP Systems”, IEEE Micro, Vol 15, Issue 5, 1995
`• V. Madisetti, et al, “Incorporating Cost Modeling in Embedded-
`System Design”, IEEE Design & Test of Computers, Vol 14, Issue 3,
`1997
`• V. Madisetti, et al, “Conceptual Prototyping of Scalable Embedded
`DSP Systems”, IEEE Design & Test of Computers, Vol 13, Issue 3,
`1996.
`• V. Madisetti, Electronic System, Platform & Package Codesign,”
`IEEE Design & Test of Computers, Vol 23, Issue 3, June 2006.
`• V. Madisetti, et al, “A Dynamic Resource Management and
`Scheduling Environment for Embedded Multimedia and
`Communications Platforms”, IEEE Embedded Systems Letters, Vol 3,
`Issue 1, 2011.
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`I have over 100 peer-reviewed publications issued from the early
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`7.
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`1980s to the present on topics related to computer engineering, computer sciences
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`and wireless communications and digital system design.
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`8.
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`I am a Fellow of the Institute of Electrical and Electronics
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`Engineering (“IEEE”), which signifies the highest professional standing in my
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`research and educational community.
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`9.
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`I have already been qualified as an expert in over a dozen trials, and
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`two recent cases: Harkabi v. SanDisk Corp., No. 08-cv-8203 (S.D.N.Y.) and
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`Yangaroo Inc. v. Destiny Media Techs. Inc., No. 09-cv-462 (E.D. Wisc.) the
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`technology at issue was specific to the area of digital rights management of
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`software products. I testified in both of these cases at trial (Harkabi v. SanDisk)
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`and by deposition (Yangaroo v. Destiny).
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`10.
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`In sum, I have over 25 years of experience in research and
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`development in the areas of computer engineering and electrical engineering as a
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`professor, researcher and consultant.
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`11.
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`I have been retained by Ubisoft Inc., Sega of America, Inc., Kofax,
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`Inc. and Cambium Learning Group, Inc. and am submitting this declaration to offer
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`my independent expert opinion concerning certain issues raised in the Petition for
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`inter partes Review (“Petition”). My compensation is not based on the substance
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`of the opinions rendered here. As part of my work in connection with this matter, I
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`have studied U.S. Patent No. 5,490,216 (“the ‘216 patent”), including the
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`respective written descriptions, figures, claims, in addition to the original file
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`history and subsequent reexamination proceedings. Moreover, I have reviewed
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`various documents from the prior litigation proceeding in the U.S. District Court
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`for the District of Rhode Island, Uniloc USA, Inc. et al. v. Microsoft Corp., No. 03-
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`CV0440 (WES) and subsequent Federal Circuit opinions on appeals. Moreover, I
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`have reviewed the Petition for Inter Partes Review of the ‘216 patent and also
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`considered at least the following references:
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`• U.S. Patent No. 5,509,070 to Schull, et al., (“Schull”), entitled “Method
`for Encouraging Purchase of Executable and Non-Executable Software”
`filed on December 15, 1992 and issued on April 16, 1996 [Exhibit
`1002]
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`• U.S. Patent No. 5,199,066 to Logan (“Logan”), entitled “Method and
`Apparatus for Protecting Software,” filed on April 18, 1989 and issued
`on March 30, 1993 [Exhibit 1003]
`
`• U.S. Patent No. 5,291,598 to Grundy, (“Grundy”), entitled “Method and
`System for Decentralized Manufacture of Copy-Controlled Software,”
`filed on April 7, 1992, and issued on March 1, 1994 [Exhibit 1004]
`
`• U.S. Patent No. 5,077,660 to Haines, et al., (“Haines”), entitled “Remote
`Meter Configuration,” filed on March 23, 1989, and issued on December
`31, 1991 [Exhibit 1005]
`
`• U.S. Patent No. 5,956,505 to Manduley (“Manduley”), entitled “Remote
`Activation of Software Features in a Data Processing Device,” filed on
`December 24, 1991, and issued on September 21, 1999 [Exhibit 1006]
`
`• Claim Construction Order entered in Uniloc USA, Inc. and Uniloc
`Singapore Private Ltd., v. Microsoft Corp., Case No. 1:03-cv-00440-
`WY-DLM (Aug. 22, 2006 D. R.I.) [Exhibit 1008]
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`• Federal Circuit Opinion, dated Aug. 7, 2008, entered in Uniloc USA, Inc.
`and Uniloc Singapore Private Ltd., v. Microsoft Corp. [Exhibit 1009]
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`• Federal Circuit Opinion, dated January 4, 2011, entered in Uniloc USA,
`Inc. and Uniloc Singapore Private Ltd., v. Microsoft Corp. [Exhibit
`1010]
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`• Australian Provisional No. PL4842, filed September 21, 1992
`(“Parent 4842”) [Exhibit 1025]
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`• Australian Provisional No. PL5524, filed October 26, 1992 (“Parent
`5524”) [Exhibit 1026]
`
`
`II. OPINION
`A. Level of a Person Having Ordinary Skill in the Art
`12.
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`It is my understanding that Patent Owner has previously identified,
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`and the Petitioners are presently suggesting, that the level of a person having
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`ordinary skill in the art as having 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
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`development or the equivalent work experience. I have no reason to disagree with
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`this suggested level of ordinary skill in the art. Based on my education, training,
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`and professional experience in the field of the claimed invention, I am familiar
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`with the level and abilities of a person of ordinary skill in the art at the time of the
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`claimed invention. Additionally, I was a person having ordinary skill in the art as
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`of the filing date of the ‘216 Patent and as of the filing dates of the two Australian
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`patent applications to which the ‘216 Patent claims priority.
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`Background of Software Registration & Activation
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`B.
`13. Software authorization and licensing systems have been of interest,
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`and available, to the industry at least since the early 1980s. Appendix B, Suhler, et
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`al., IEEE Software (1986). This availability and use increased significantly with
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`the wider use of software by end-users. Suhler at p. 34. As use and distribution of
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`software increased, however, it became apparent that there were problems
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`associated with the increased use – an increase in unauthorized use, or pirates.
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`Suhler at 34. As a result, the industry became more interested in methods of
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`preventing unregistered sales and unauthorized use
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`through
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`the use of
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`authorization and licensing technologies. Suhler at 35.
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`14.
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`In order for such technologies to be viable, however, software
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`designers had to take into account cost and compatibility with existing programs
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`and operating systems, including those that are not otherwise protected and those
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`that are protected. Suhler at 35. Taking these concerns to mind, some of the initial
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`technologies included hardware devices, such as dongles.
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`15. For example, in 1980, Business Professional Industrial protected its
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`accounting software with a hardware security device that was inserted into a game
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`paddle port. Suhler at 35. Sensor-Based System also used the hardware approach
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`by requiring the installation of a PROM chip in the system. Suhler at 35. The
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`major drawbacks of these systems were cost, portability, inconvenience and
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`durability.
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`16. From the hardware devices mentioned above, the focus of software
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`authorization shifted to preventing unauthorized copying and prevention of
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`unauthorized execution of software products. Techniques developed to address
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`this new focus include copy protection, validation and encryption. Suhler at 35-36.
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`However these all have their own advantages and disadvantages, as described
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`below:
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`17.
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` The ‘216 Patent focuses on the validation approach in which
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`protected software checks the right of the user to execute or operate the software.
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`Systems using the validation approach typically look for a unique key in the
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`system, and if it is not found, the program assumes that the software is on an
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`unlicensed machine and execution is aborted. Suhler at 36. If the key is found, the
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`program continues to execute.
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`18. A related validation method is customer-based validation. An
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`example of this is found in the case of the “Computerized Gradebook.” Appendix
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`C, Bryon K. Ehlmann, “Designing Software to be Used Up and Protecting it From
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`Pirates,” ACM SIGSMALL/PC Notes, vol. 11, iss. 3 (Aug. 1985). The
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`Computerized Gradebook utilizes a “software-based software authorization
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`system,” also referred to as a “customer validation procedure.” Ehlmann at 10. A
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`teacher using the Computerized Gradebook may use the software a number of
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`times without obtaining authorization. Ehlmann at 10, 14. However, in order to
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`obtain full rights to the software, the teacher must obtain a password from the
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`vendor. The teacher does so by either calling or mailing a twelve-digit number
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`displayed on the software front screen. Ehlmann at 10, 11. The twelve-digit
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`number is made up of: (1) a six-digit number unique to that piece of software (i.e.,
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`serial number), (2) a two-digit number based on the number of classes recorded in
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`the gradebook, and (3) a four-digit number that characterizes how the gradebook
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`has been used up to that time. Ehlmann at 11, 12, 13-14. Thus, this number is
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`unique to the software and to the user. From this number, the vendor generates a
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`password and transmits it, orally or physically, to the teacher. Ehlmann at 12, 14.
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`The teacher then enters the password and the software validates the password
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`“based on the same computation used by the vendor. Ehlmann at 14. Once
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`validated, the Computerized Gradebook is available for further use.
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`C.
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`Software Registration and Activation According to the Asserted
`Patent
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`19.
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`In the background of the asserted patent, the Applicant describes a
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`number of software registration systems. Specifically, the Applicant noted systems
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`that require a user to input a vendor-assigned unique number at the time of
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`installation. Ex. 1001, ‘216 Patent at 1:11-19. The Applicant noted systems where
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`an intending licensee is initially given only a shell program and must obtain
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`essential portions of the program from a remote location upon payment of the
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`registration fee. Id. at 1:29-56. The Applicant also noted two patents (U.S. Patent
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`Nos. 4,796,220 and 4,688,169) describing registration systems that uniquely
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`recognize the platform upon which the software is to be run, and only allow the
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`software to run if the platform is registered.
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`20. The software registration system described in the ‘216 Patent is based
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`on a few simple concepts. First, a registration number is generated on a user’s PC
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`from information input by the user or provided by the software vendor using a
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`registration algorithm. ‘216 Patent at 2:65-3:2, 3:18-21. Second, using the same
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`inputs and same registration algorithm, another registration number is generated at
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`a remote registration authority and provided to the user. ‘216 Patent at 3:3-9.
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`Finally, these two registration numbers are compared at the user’s computer and if
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`the two numbers match, the protected software is allowed to run in a fully-enabled
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`mode. ‘216 Patent at 7:38-46.
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`III. PRIORITY
`21.
`I was asked to consider whether claims 1-11 and 17-20 of the ‘216
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`Patent are supported by Australian Provisional No. PL4842, filed September 21,
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`1992 (Ex. 1025, “Parent 4842”) and Australian Provisional No. PL5524, filed
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`October 26, 1992 (Ex. 1026, “Parent 5524”), to which the ‘216 Patent claims
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`priority.
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`22.
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`It is my understanding that in order for a patent to claim priority to a
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`prior application, the specification of the earlier-filed application must provide an
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`adequate written description of the invention claimed in the later-filed application
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`and provide an enabling disclosure of that claimed invention.
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`23.
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`In my opinion, claims 1-11 and 17-20 of the ‘216 Patent are not
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`supported by either Parent 4842 or Parent 5524. Specifically, I do not see any
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`description of structure in Parent 4842 or Parent 5524 for performing the functions
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`of the “licensee unique ID generating means” or “mode switching means.”
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`24.
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`It is my understanding that the District Court construed the term
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`“licensee unique ID generating means” to include the structures of a “summation
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`algorithm or a summer.” Looking to Parent 4842 and Parent 5524, I do not see a
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`disclosure of any structure for the “licensee unique ID generating means” claimed
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`in the ‘216 patent, whether through an algorithm, flowchart or hardware. More
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`specifically, there is no description whatsoever of a summation algorithm
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`(software) or summer (hardware). Rather, there is only a vague reference to a
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`“registration number algorithm,” which is not described in any detail other than to
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`say that pieces of information are “combined.” 4842 Parent at 3; 5524 Parent at 2;
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`also 4842 Parent at 6; 5524 Parent at 6. This is purely a functional description
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`that does not provide any guidance as to its structure, such as how to perform the
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`function. One of ordinary skill in the art would not understand the meaning of the
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`term “registration number algorithm” in view of this particularly vague description,
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`as there were multitudes of ways to “combine” information in 1992.
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`25. The ‘216 Patent includes disclosures at 1:29-3:64, 4:49-62, 5:30-6:25,
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`and 9:53-13:52 and Figures 5-10 that are not present in the Parent 4842 or Parent
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`5524. The portions of the ‘216 patent specification that disclose a summation
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`algorithm and summer, such as the embodiments described at 11:53-56, 12:62-65,
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`and Fig. 10, are not present in either the Parent 4842 or the Parent 5524.
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`26.
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`It is also my understanding that the District Court construed the term
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`“mode switching means” to include the structures of code that performs a
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`comparison of two numbers or a comparator. The Parent 4842 and Parent 5524
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`similarly do not disclose any structure for the “mode switching means” claim
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`limitations in the ‘216 Patent, such as through an algorithm for performing a
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`comparison (software) or a comparator (hardware).
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`27. The portions of the ‘216 Patent that disclose a hardware comparator
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`and code for performing a comparison, such as the embodiments described at 6:12-
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`14 and 13:37-40, and Fig. 10, are not present in the Parent 4842 or Parent 5524.
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`IV.
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`INVALIDITY UNDER 35 U.S.C. § 103
`A. Legal Framework
`28.
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`I understand that a patent claim is not patentable under 35 U.S.C. § 103
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`if the differences between the patent claim and the prior art are such that the
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`claimed subject matter as a whole would have been obvious at the time the claimed
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`invention was made to a person having ordinary skill in the art to which the subject
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`matter pertains. Obviousness, as I understand it, is based on the scope and content
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`of the prior art, the differences between the prior art and the claim, the level of
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`ordinary skill in the art, and, to the extent that they exist and have an appropriate
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`nexus to the claimed invention (as opposed to prior art features), secondary indicia
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`of non-obviousness.
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`29.
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`I have been informed that whether there are any relevant differences
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`between the prior art and the claimed invention is to be analyzed from the view of
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`a person of ordinary skill in the art at the time of the invention. As such, my
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`opinions below as to a person of ordinary skill in the art are as of the time of the
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`invention, even if not expressly stated as such; for example, even if stated in the
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`present tense.
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`30.
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`In analyzing the relevance of the differences between the claimed
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`invention and the prior art, I have been informed that I must consider the impact, if
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`any, of such differences on the obviousness or non-obviousness of the invention as
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`a whole, not merely some portion of it. The person of ordinary skill faced with a
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`problem is able to apply his or her experience and ability to solve the problem and
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`also look to any available prior art to help solve the problem.
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`31. An invention is obvious if a person of ordinary skill in the art, facing
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`the wide range of needs created by developments in the field, would have seen an
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`obvious benefit to the solutions tried by the applicant. When there is a design need
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`or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, it would be obvious to a person of ordinary skill to try the
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`known options. If a technique has been used to improve one device, and a person
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`of ordinary skill in the art would recognize that it would improve similar devices in
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`the same way, using the technique would have been obvious.
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`32.
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`It is my understanding that a precise teaching in the prior art directed
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`to the subject matter of the claimed invention is not needed and that one may take
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`into account the inferences and creative steps that a person of ordinary skill in the
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`art would have employed in reviewing the prior art at the time of the invention.
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`For example, if the claimed invention combined elements known in the prior art
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`and the combination yielded results that were predictable to a person of ordinary
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`skill in the art at the time of the invention, then this evidence would make it more
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`likely that the claim was obvious. On the other hand, if the combination of known
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`elements yielded unexpected or unpredictable results, or if the prior art teaches
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`away from combining the known elements, then this evidence would make it more
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`likely that the claim that successfully combined those elements was not obvious.
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`33.
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`I understand that hindsight must not be used when comparing the prior
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`art to the invention for obviousness.
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`34.
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`It is my understanding that obviousness may also be shown by
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`demonstrating that it would have been obvious to modify what is taught in a single
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`piece of prior art to create the subject matter of the patent claim. Obviousness may
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`be shown by showing that it would have been obvious to combine the teachings of
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`more than one item of prior art. In determining whether a piece of prior art could
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`have been combined with other prior art or combined with or modified in view of
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`other information within the knowledge of one of ordinary skill in the art, the
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`following are examples of approaches and rationales that may be considered:
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`•
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`•
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`Combining prior art elements according to known methods to yield
`predictable results;
`Simple substitution of one known element for another to obtain
`predictable results;
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`•
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`•
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`•
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`•
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`•
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`35.
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`Use of a known technique to improve similar devices (methods, or
`products) in the same way;
`Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`Applying a technique or approach that would have been "obvious to
`try" (choosing from a finite number of identified, predictable solutions,
`with a reasonable expectation of success);
`Known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; or
`Some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed
`invention.
`I understand that the rationale for modifying a reference and/or
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`combining references may come from sources such as explicit statements in the
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`prior art, or the knowledge of one of ordinary skill in the art, including any need or
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`problem known in the field at the time, even if different from the specific need or
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`problem addressed by the inventor of the patent claim.
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`36.
`
`I understand that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider "secondary
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`considerations" if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an
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`invention would not have been obvious in view of these considerations, which
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`include: (a) commercial success of a product due to the merits of the claimed
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`invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of
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`others to find the solution provided by the claimed invention; (d) deliberate
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`copying of the invention by others; (e) unexpected results achieved by the
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`invention; (f) praise of the invention by others skilled in the art; (g) lack of
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`independent simultaneous invention within a comparatively short space of time;
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`(h) teaching away from the invention in the prior art.
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`37.
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`I further understand that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be to prior art features. The
`
`establishment of a nexus is a question of fact.
`
`B. Operating Systems
`38.
`
`I note that claims 10 and 11 require the presence of a “computer
`
`operating system environment.” While some of the references do not expressly
`
`disclose the particular architecture of the personal or traditional computers on
`
`which their programs operate, the presence of an “operating system” in such
`
`contexts is required and, therefore, implicitly present. This is true because, by
`
`1993, and even prior to that time, operating systems for personal computers had
`
`become ubiquitous and necessary to the operation of software on the computer.
`
`
`
`18
`
`Petitioners Ex. 1007 Page 18
`
`
`
`For example, in April 1992, Microsoft released Windows 3.1. Even earlier, Apple
`
`released the predecessor to Mac OS (referred to as “System Software” in early
`
`versions) in 1984 (with System 7 being released in 1991) and the LINUX operating
`
`system was released in 1991. Indeed, the ‘216 Patent itself identifies multiple
`
`operating systems available at the time, such as MicroSoft DOS, IBM OS/2 and
`
`Macintosh System 7. Ex. 1001, ‘216 Patent at 2:32-36. While these are only a
`
`few of the operating systems available at the time, it is clear that operating systems
`
`for traditional personal computers were almost universally being used by 1993 and
`
`that any program running on a computer, including those described in the
`
`references, would be adapted to run under that operating system or in that
`
`environment. Therefore, the presence of an “operating system” in Schull, in
`
`particular, is implicitly, if not expressly, present. In the event that these limitations
`
`are not implicit in Schull, it would have been obvious to use the software on a
`
`computer having an operating system for the reasons stated above.
`
`C.
`39.
`
`Schull
`
`I was asked to consider two discrete issues with respect to Schull, in
`
`addition to that discussed in the previous section. The first is related to the
`
`assignment of Program IDs in Schull. Schull first describes that a programmer may
`
`assign an “adequately unique” Program ID to “each item of protected software.”
`
`Ex. 1002, Schull at 7:16-21. Schull further describes that a programmer can use a
`
`
`
`19
`
`Petitioners Ex. 1007 Page 19
`
`
`
`random number generator to assign a value for the Program and Feature IDs.
`
`Schull at 7:50-56. Schull also describes that Feature IDs can be assigned by a
`
`central computer that maintains a list of previously assigned IDs. Schull at 7:56-
`
`59. Because the Feature IDs and Program IDs are discussed together in this
`
`section of Schull entitled, “Method of assigning Feature-IDs and Program IDs,” it
`
`is my opinion that the central computer’s function of assigning Feature IDs would
`
`be equally applicable to Program IDs, i.e., the central computer could also assign
`
`unpredictable Program IDs in the same manner as it does Feature IDs.
`
`40. The second issue I was asked to consider is whether Schull discloses
`
`an algorithm for generating a Passwordable ID that falls within the construction of
`
`a “licensee unique ID generating means.” In other words, is the algorithm
`
`described in Schull for generating a Passwordable ID a “summation algorithm or
`
`equivalent thereof”? It is my opinion that it is.
`
`41. Schull describes a password-generating algorithm that concatenates a
`
`Program ID, Feature ID and Target-ID to produce a Passwordable ID, which is
`
`number having N+M+T digits. Schull at 7:16-27. (I would like to note that Schull
`
`appears to have a typo in this section. Specifically, Schull refers to a Program ID,
`
`Feature ID and Target-ID as having P-digits, F-digits and T-digits, respectively
`
`(Schull at 7:19-21), but later refers to N, M and T digits (Schull at 7:25). As one of
`
`ordinary skill in the art reading this passage, I understand N and M to be equivalent
`
`
`
`20
`
`Petitioners Ex. 1007 Page 20
`
`
`
`to P and F, respectively.). As discussed further below, in my opinion,
`
`concatenation of these three numbers constitutes a summation algorithm or an
`
`equivalent thereof.
`
`42. Specifically, most programming languages include the concepts of
`
`“integers” (i.e., numbers) and “strings” (i.e., a sequence of characters).
`
`Concatenation is the operation of joining two strings end-to-end. The “+”
`
`(addition) operator in many programming languages, such as Visual Basic, Python
`
`and Pascal, denotes concatenation. As of 1992, concatenation of three integers, for
`
`example, could be performed in a variety of ways, but essentially boils down to
`
`two basic approaches: (1) multiplying the first integer and second integer by a
`
`power of ten (dependent on the number of digits of the subsequent numbers) and
`
`adding the three integers together, or (2) converting the integers to “strings,”
`
`concatenating the strings, and converting the result back to an integer. Each of
`
`these programmatic approaches will provide the same result.
`
`43. However, there is an advantage to using the summation approach (1) –
`
`speed. Because it is a matter of performing basic calculations and processing
`
`smaller numbers, as opposed to converting, combining and reconverting large
`
`strings, the summation approach (1) is computationally quicker.
`
`44. Using Schull as an example, numbers X, Y and Z (corresponding to the
`
`Program ID, Feature ID and Target ID) having N, M and T digits, respectively, are
`
`
`
`21
`
`Petitioners Ex. 1007 Page 21
`
`
`
`concatenated using the summation approach (1) by performing the following
`
`operation: X*10(M+T) + Y*10T + Z. In this example, assuming that X = 1234, Y =
`
`56 and Z = 789. Thus, the algorithm would perform the following calculation:
`
`1234*105 + 56*103 + 789 = 123456789. This is nothing more than multiplication
`
`and addition. As recognized by Uniloc’s expert in the litigation, multiplication is
`
`“nothing more than addition done over and over again.” Ex. 1010, Fed. Cir.
`
`Decision dated Jan. 4, 2011, at 17 (quoting Klausner declaration). Put another
`
`way, this form of concatenation is little more than left shifting, i.e., multiplication,
`
`the original numbers the appropriate number of digits and adding those values.
`
`45. Using approach (2) – combining 1234, 56 and 789 into a string – the
`
`final result is also 123456789.
`
`46. As discussed in the Petition, it is my understanding that a “summation
`
`algorithm or equivalent” is not limited to simple addition, although the
`
`concatenation described above is close to that. At the very least, the concatenation
`
`described above uses addition
`
`to perform
`
`the function of generating a
`
`Passwordable ID. The use of addition in this form of concatenation is at least as
`
`important as the use of addition in MD5, which was found to be an equivalent
`
`structure to a “summation algorithm.” Ex. 1010, Fed. Cir. Decision dated Jan. 4,
`
`2011, at 21.
`
`
`
`22
`
`Petitioners Ex. 1007 Page 22
`
`
`
`47. Therefore, it is my opinion, that concatenation in the context of Schull,
`
`and as described above, is a summation algorithm or equivalent because it
`
`prominently uses addition to perform the function of generating a Passwordable
`
`ID.
`
`48. M
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