UNITED STATES PATENT AND TRADEMARK OFFICE
`
`' UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Oflice
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandna. Virginiu ZBIII-I450
`www.uspIu.gov
`;
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET‘ NO.
`
`CONFIRMATION NO.
`
`90/0I0.83I
`
`0|/22/20l0
`
`5.490.216
`
`'
`
`6620~83067-OI
`
`»
`
`22 I4
`
`7590
`
`04/09/2010
`
`ABELMAN, FRAYNE & SCHWAB
`150 EAST 42nd STREET
`NEW YORK, NY 10017-5612
`
`EXAMINER
`
`PAPERNUMBER
`
`DATE MAILED: 04/09/2010
`9
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Petitioners Ex. 1014 Page 1
`
`Petitioners Ex. 1014 Page 1
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`

`
`Commissionerfor Patents
`United States Patent and Trademark Olfice
`P.0. Box14so
`Alexandria, VA 22313-1450
`vw~.wusp1o.gov
`
`LED
`
`MN
`0 9
`
`_ cemm REEXAMll\lATl0N UNIT
`
`
`
`‘V UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Do NOT USE IN PALM PRINTER
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Kyle Rinehart
`Klarquist Sparkman, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, OR 97204
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/010 831.
`
`PATENT NO. 5 490 216.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-04)
`
`Petitioners Ex: 1014 Page 2
`
`Petitioners Ex. 1014 Page 2
`
`

`
`Control No.
`
`90/010,831
`Examiner
`
`Patent Under Reexamination
`
`5,490,216
`Art Unit
`
`MATTHEW HENEGHAN
`
`3992
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 22 January 2010 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`'
`
`
`Attachments: a)l:I PTO—892,
`
`
` b)lZI PTO/SB/O8,
`
`c)|:] Other:
`
`1.
`
`The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`
`
`
`
`
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`
`
`
`2. E] The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`
`
`a) C] by Treasury check or,
`
`
`b) 1:] by credit to Deposit Account No.
`
`,0I'
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`
`c) El by credit to a credit card account, unless othenivise notified (35 U.S.C. 303(c)).
`
`
`
`ifthird art
`cc:Reuester
`US. Patent and Trademark Offica
`
`reuester
`
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20100331
`
`
`
`Petitioners Ex. 1014 Page 3
`
`Petitioners Ex. 1014 Page 3
`
`

`
`Application/Control Number: 90/010,831
`Art Unit: 3992
`
`H
`
`Page 2
`
`DECISION GRANTING EX PARTE EXAMINATION
`
`Reexamination
`
`An Ex Parte Reexamination has been requested by a third party on 22 January
`
`2010 for claims 1-20 of U.S. Patent No. 5,490,216 (hereinafter ”the ‘216 patent”),
`
`granted on 6 February 1996.
`
`A substantial new question of patentability affecting claims 1-20 of United States
`
`Patent Number 5,490,216 is raised by the request for ex parte reexamination.
`
`The patent owner is reminded of the continuing responsibility under 37 CFR
`
`1.565(a) to apprise the Office of any litigation activity, or other prior or concurrent
`
`proceeding, involving Patent No. 5,490,216 throughout the course of this reexamination
`
`proceeding. The third party requester is also reminded of the ability to similarly apprise
`
`the Office of any such activity or proceeding throughout the course of this reexamination
`
`proceeding. See MPEP §§ 2207, 2282 and 2286.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
`
`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
`
`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`Petitioners Ex. 1014 Page 4
`
`Petitioners Ex. 1014 Page 4
`
`

`
`Application/Control Number: 90/010,831
`Art Unit: 3992
`‘
`
`'
`
`‘Page 3
`
`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(0).
`
`References Submitted by Requester
`
`U.S. Patent No. 4,658,093 to Richardson, Ill (hereinafter Richardson)
`
`U.S. Patent No. 4,796,220 to Grundy (hereinafter Grundy)
`
`U.S. Patent No. 5,291,598 to Wolfe (hereinafter Wolfe)
`
`U.S. Patent No. 5,490,216 to Hellman (hereinafter Hellman)
`
`None of the references cited above were discussed by the'Office in a previous
`
`examination or reexamination proceeding.
`
`Prosecution History
`
`The ‘216 patent was originally filed as Application No. 08/124,718 on 21
`
`September 1993, having claims 1-30.
`
`In a non-final rejection mailed by the Office on 24 June 1994, claims 1-30 were
`
`rejected. Claims 22-24 and 27-29 were rejected under 35 U.S.C. 101, claims 13-18 and
`
`Petitioners Ex. 1014 Page 5
`
`Petitioners Ex. 1014 Page 5
`
`

`
`Application/Control Number: 90/010,831
`
`Page 4
`
`Art Unit: 3992
`
`27-29 were rejected under 35 U.S.C. 112, second paragraph, and claims 1-30 were
`
`rejected under 35 U.S.C. 102(e) over U.S. Patent No. 5,222,133 to Chou et al.
`
`After the Applicant filed an amendment on 27 December 1994 cancelling claims
`
`22-24 and 27-29, the Office mailed a second non-final rejection on 30 March 1995,
`
`rejecting claims 1-21, 25, 26, and 30 under 35 U.S.C. 103 over U.S. Patent No.
`
`5,291,598 to Grundy. The rejection under_35 U.S.C. 112, second paragraph of claims
`
`13-18 was not maintained.
`
`in an amendment filed 5 July 1995, the Applicant cancelled claims 1-21, 25, 26,
`
`and 30 (i.e. all remaining claims to that point) and added claims 31-50. The Applicant
`
`argued that the cited prior art did not teach:
`
`“(a) The ‘Licensee Unique ID’ on which the registration system relies for matching for
`verification purposes is generated locally, and
`I
`I
`
`(b) The algorithm used to generate locally the ‘Licehsee Unique ID’ is replicated
`
`remotely for the purposes of remote generation of a separate ‘Licensee Unique ID’ for
`
`matching purposes.”
`
`and
`
`“(1) A direct comparison for matching purposes of the licensee unique ID data at the
`
`local location, and
`
`(2) Aconfirmation that the user details provided to the remote location match identically
`
`with the user details provided to the software to be protected and from which the unique
`
`ID is generated.”
`
`Petitioners Ex. 1014 Page 6
`
`Petitioners Ex. 1014 Page 6
`
`

`
`Application/Control Number: 90/010,831
`
`Page 5
`
`Art Unit: 3992
`
`The Office mailed a Notice of Allowance on 8 August 1995 without further V
`
`comment.
`
`None of the claims of the ‘216 patent have been subject to a final holding of
`
`invalidity by a court.
`
`Claims of the ‘216 Patent
`
`The following are the 5 independent claims of the ‘216 patent:
`
`Claim 1:
`
`1. A registration system for licensing execution of digital data in a use mode,
`
`said digital data executable on a platform, said system including
`
`local licensee unique ID generating means and remote licensee unique ID
`
`generating means,
`
`said system further including mode switching means operable on said platform
`
`which permits use of said digital data in said use mode on said platform only if a
`licensee unique lDfirst generated by said local licensee unique ID generating means
`
`has matched a licensee unique ID subsequently generated by said remote licensee
`
`unique ID generating means; and
`
`Petitioners Ex. 1014 Page 7
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`Petitioners Ex. 1014 Page 7
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`

`
`Application/Control Number: 90/010,831
`
`Page 6
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`Art Unit: 3992
`
`'
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`wherein said remote licensee unique ID generating means comprises software
`
`executed on a platform which includes the algorithm utilized by said local licensee
`
`unique ID generating means to produce said licensee unique ID.
`
`12. A registration system attachable to software to be protected,
`
`said registration system generating a security key from information input to said
`
`software which uniquely identifies an intended registered user of said software on a
`
`computer on which said software is to be installed; and
`
`wherein said registration system is replicated at a registration authority and used
`
`for the purposes of checking by the registration authority that the information unique to
`
`the user is correctly entered at the time that the security key is generated by the
`
`registration system.
`
`17. A method of control of distribution of software, said method comprising
`
`providing mode-switching means associated with said software adapted to switch
`
`said software between a fully enabled mode and a partly enabled or demonstration
`
`mode,
`
`said method further comprising providing registration key generating means
`
`adapted to generate a ‘registration key’ which is a function ofinformation unique to an
`
`intending user of the software;
`
`said mode-switching means switching said software into fully enabled mode only
`
`if an enabling key provided to said mode-switching means by said intending user at the
`
`Petitioners Ex. 1014 Page 8
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`Petitioners Ex. 1014 Page 8
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`

`
`Application/Control Number: 90/010,831
`
`Art Unit: 3992
`
`'
`
`'
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`Page 7
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`time of registration of said software has matched identically with said registration "key;
`
`and
`
`wherein said enabling key is communicated to said intending user at the time of
`
`registration of said software;
`
`said enabling key generated by a third party means of operation of a duplicate
`
`copy of said registration key generating means.
`
`19. A remote registration station incorporating remote licensee unique ID
`
`generating means, said station forming part of a registration system for licensing
`
`execution of digital data in a use mode, said digital data executable on a platform, said
`
`system including
`
`local licensee unique ID generating means,
`
`said system further including mode switching means operable on said platform
`
`which permits use of said digital data in said use mode on said platform only if a
`
`licensee unique ID generated by said local licensee unique ID generating means has
`
`matched a licensee unique ID generated by said remote licensee unique ID generating
`
`means; and
`
`wherein said remote licensee unique ID generating means comprises software
`
`executed on a platform which includes the algorithm utilized by said local licensee
`
`unique ID generating means to produce said licensee unique ID.
`
`Petitioners Ex. 1014 Page 9
`
`Petitioners Ex. 1014 Page 9
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`

`
`Application/Control Number: 90/010,831
`
`Page 8
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`Art Unit: 3992
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`20. A method of registration of digital data so as to enable execution of said
`
`digital data in a use mode, said method comprising
`
`an intending licensee operating a registration system for licensing execution of
`
`digital data in a use mode,
`
`said digital data executable on a platform,
`
`said system including local licensee unique ID generating means and remote
`
`licensee unique ID generating means, said system further including mode switching
`
`means operable on said platform which permits use of said digital data in said use
`
`mode on said platform only if a licensee unique ID generated by said local licensee
`
`unique ID generating means has matched a licensee unique ID generated by said
`
`remote licensee unique ID generatingmeans; and
`
`wherein said remote licensee unique ID generating means comprises software
`
`executed on a platform which includes the algorithm utilized by said local licensee
`
`unique ID generating means to produce said licensee unique ID.
`
`Substantial New Questions of Patentability (SNQ)
`
`Hellman
`
`Hellman discloses a software authorization system where a locally generated
`
`code (C, see column 10, lines 14-18) is compared to a remotely generated code (A, see
`
`column 6, lines- 3-8) to determine authorization (see column 10, lines 18-26). This was
`
`not taught byithe art cited during prosecution. It is agreed that a reasonable examiner
`
`Petitioners Ex. 1014 Page 10
`
`Petitioners Ex. 1014 Page 10
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`

`
`Application/Control Number: 90/010,831
`
`Art Unit: 3992
`
`1
`
`Page 9
`
`would have found this reference important, either alone or in combination with Grundy,
`./
`
`in determining the patentability of claims 1-20.
`
`Grundy
`
`During the original examination, the Examiner relied on Grundy to show a
`
`comparison of locally and remotely generated codes by pointing to a comparison
`
`between the User Data 301 and the encrypted authorization code 318. The Third Party
`
`Requester has pointed out that the Examiner did not note during prosecution the
`
`comparison between checksums at step 310 between the user generated checksum
`
`309 and the corresponding value derived at the Manufacture Control Agency (see
`
`column 15, lines 10-22). These fields, however, are checksums. Checksums are not
`
`unique fields, even if there are at least in part derived from unique data. It is NOT
`
`agreed that a reasonable examiner would have found this reference important in
`
`determining the patentability of claims 1-20.
`
`Petitioners Ex. 1014 Page 11
`
`Petitioners Ex. 1014 Page 11
`
`

`
`Application/Control Number: 90/010,831
`Art Unit: 3992
`
`Page 10
`
`Conclusion
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`
`«
`
`Alexandria, VA 22313-1450
`
`By FAX to: (571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the electronic
`filing system EFS-Web, at httgs://sportal.uspto.gov/authenticate/authenticateuserlocalegf.html. EFS-
`Web offers the benefit of quick submission to the particular area of the Office that needs to act on
`the correspondence. Also, EFS-Web submissions are “soft scanned" (i.e., electronically uploaded)
`directly into the official file for the reexamination proceeding, which offers parties the opportunity to
`review the content of their submissions after the “soft scanning” process is complete.
`
`Any inquiry concerning this communication should be directed to Examiner Matthew Heneghan at
`telephone number (571)272-3834.
`
`/Matthew Heneghanl
`
`Primary Examiner, USPTO AU 3992
`
`Conferees:
`
`A HARRISON
`SUPERVISORY PATENT EXANHNER
`
`Petitioners Ex. 1014 Page 12
`
`Petitioners Ex. 1014 Page 12