67274 u.s. PTO
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`\111111111111\\\\\\\\l\\\(\)\\\\\\\\\\\\\\\
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`1 1/29/
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re reexamination of:
`
`Confirmation No.2 2214
`
`Frederic B. RICHARDSON, HI
`
`Art Unit: 3992
`
`Control No.: 90/010,831
`
`Examiner: HENEGHAN, Matthew
`
`Filed: January 22, 2010
`
`Atty. Docket: 2914.001REXO
`
`For: System for Software Generation
`
`Reply to Office Action in Ex Parte Reexamination
`
`Mail Stop Ex Parte Reexamination
`
`Central Reexamination Unit
`Commissioner for Patents
`
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Patent Owner hereby replies to the Office Action in the above-captioned ex
`
`parte reexamination dated September 28, 2010. The due date for reply is November
`
`29, 2010.
`
`Status of the Claims is reflected in the listing of claims, which begins on page
`3 ofthis paper.
`‘
`
`Remarks begin on page 7 of this paper.
`
`If additional fees are necessary to prevent abandonment of this reexamination,
`
`then such fees are hereby authorized to be charged to our Deposit Account No.
`
`19—0036.
`
`Petitioners Ex. 1016 Page 1
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`Petitioners Ex. 1016 Page 1
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`_ 2 _
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`RICHARDSON, III.
`Control No. 90/010,831
`
`Table of Contents
`
`Listing of Claims .......................................................................................................................... 3
`Remarks ....................................................................................................................................... 7
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW ............................................ 8
`BACKGROUND INFORMATION ........................................................................................ 8
`
`1.
`II.
`
`A.
`B.
`
`Status of Concurrent Litigation ........................................................................................... 8
`Claimed Invention ............................................................................................................... 9
`
`1.
`2.
`
`Background .................................................................................................................... 9
`Brief overview of the claimed invention ...................................................................... 11
`LEGAL STANDARDS ..................................................................................................... 12
`III.
`Claim Construction ........................................................................................................... 12
`A.
`B. Means Plus Function Limitations ...................................................................................... 13
`
`Legal Overview of Obviousness Rejections Under 35 U.S.C. § 103 ................................ 15
`C.
`The Hellman/Grundy SNQ is Improper Because Grundy was Previously Considered
`D.
`During Original Examination ..................................................................................................... 16
`IV.
`RESPONSE TO THE ADOPTED SUBSTANTIVE CLAIM REJECTIONS .................. 17
`
`1.
`
`A. Overview of Rejections Under 35 U.S.C. § 103, Hellman in view of Grundy ................. 17
`B.
`Independent Claims 1, 19 and 20 ...................................................................................... 19
`Independent Claim 1 ..................................................................................................... 19
`(a) Hellman Does Not Teach or Suggest the “Licensee Unique ID” of Claim 1 ........... 20
`(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 1 ....... 26
`(c)
`Summary with respect to Hellman and Grundy with respect to independent claim 1.
`................................................................................................................................. 28
`
`2.
`
`3.
`
`1.
`2.
`
`Independent Claim 19: ................................................................................................. 28
`(a) Hellman Does Not Teach or Suggest the “Licensee Unique ID” of Claim 19 ......... 29
`(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 19 ..... 30
`Independent Claim 20: ................................................................................................. 30
`(a) Hellman Does Not Teach or Suggest “Licensee Unique ID” of Claim 20 .............. 31
`(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 20 ..... 32
`Independent Claim 12: ...................................................................................................... 32
`Hellman Does Not Teach or Suggest “Generating a Security Key” of Claim 12 ......... 33
`Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 12 .......... 33
`Independent Claim 17: ...................................................................................................... 34
`Hellman Does Not Teach or Suggest “Generating a Registration Key” of Claim 17 .. 34
`1.
`Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 17 .......... 35
`2.
`V. OBJECTIVE INDICIA OF NON-OBVIOUSNESS ............................................................. 36
`A.
`Commercial Success ......................................................................................................... 37
`
`C.
`
`D.
`
`The Uniloc ‘216 Patent Has Been and Continues to Be Extensively Licensed ................ 37
`B.
`Uniloc’s Technology and Inventions Have Been Praised by Others ................................ 38
`C.
`The ‘216 Patented Technology Meets a Long-Felt Need.................................................. 38
`D.
`A Nexus Exists Between the Commercial Success of Uniloc’s Sofiware Activation and
`E.
`Fraud Prevention Solutions and the Claims of the ‘216 Patent .................................................. 39
`
`Conclusion with Respect to Secondary Indicia of Non-Obviousness ............................... 39
`F.
`Conclusion ................................................................................................................................. 40
`
`Atty. Dkt. N0. 2914.001REXO
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`Petitioners Ex. 1016 Page 2
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`Petitioners Ex. 1016 Page 2
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`

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`_ 3 _
`
`RICHARDSON, III.
`Control No. 90/010,831
`
`Listing of Claims
`
`Original claims 1-20 from US. Patent No. 5,490,216 to Richardson (“the ‘216
`
`patent”) are subject to ex parte reexamination. No claims are cancelled or amended.
`
`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 ID first 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 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.
`
`2.
`
`The system of claim 1, wherein said local licensee unique ID generating
`
`means generates said local licensee unique ID by execution of a registration algorithm which
`
`combines
`
`information in accordance with said algorithm,
`
`said information uniquely
`
`descriptive of an intending licensee of said digital data to be executed in said use mode.
`
`3.
`
`The system of claim 2, wherein said rnode switching means permits operation
`
`of said digital data in said use mode in subsequent execution of said digital data only if said
`
`licensee unique ID generated by said local licensee unique ID generating means has not
`
`changed.
`
`4.
`
`The system of claim 3, wherein said local licensee unique ID generating
`
`means comprises part of said digital data when executed on said platform.
`
`5.
`
`The system of claim 4, wherein said mode switching means comprises part of
`
`said digital data when executed on said platform.
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 3
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`Petitioners Ex. 1016 Page 3
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`- 4 -
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`RICHARDSON, III.
`Control No. 90/010,831
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`6.
`
`The system of claim 5, wherein the information utilized by said local licensee
`
`unique ID generating means to produce said licensee unique ID comprises prospective
`
`licensee details including at least one of payment details, contact details and name.
`
`7.
`
`The system of claim 1, said system further including platform unique ID
`
`generating means, wherein said mode switching means will permit said digital data to run in
`
`said use mode in subsequent execution of said digital data on said platform only if said
`
`platform unique ID has not changed.
`
`8.
`
`The system of claim 7, wherein said platform unique ID generating means
`
`comprises part of said digital data when executed on said platform.
`
`9.
`
`The system of claim 8, wherein said platform unique ID generating means
`
`utilizes hard disc or other platform information to determine said platform unique ID.
`
`10.
`
`The system of claim 1, wherein said platform comprises a computer operating
`
`system environment.
`
`11.
`
`The system of claim 10, wherein said digital data comprises a software
`
`program adapted to run under said operating system environment.
`
`12.
`
`A registration system attachable to software to be protected, said registration
`
`system generating a security key from information input to said sofiware 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.
`
`13.
`
`The registration system of claim 12, wherein said security key is generated by
`
`a registration number algorithm.
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 4
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`Petitioners Ex. 1016 Page 4
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`- 5 -
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`RICHARDSON, 111.
`Control No. 90/010,831
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`14.
`
`The registration system of claim 13, wherein said registration number
`
`algorithm combines information entered by a prospective registered user unique to that user
`
`with a serial number generated from information provided by the environment in which the
`
`software to be protected is to run.
`
`15.
`The registration system of claim 12, wherein said registration system checks at
`the time of boot of said software as to whether it is a first boot of the software to be protected
`
`or a subsequent boot, and, if a subsequent boot is detected, then environment and user details
`
`I are compared to determine whether the program reverts to a demonstration mode and a new
`
`user registration procedure is to commence or a full version run.
`
`16.
`
`The registration system of claim 15, wherein said environment details
`
`comprise
`
`at
`
`least one element which is not user-configurable on the platform.
`
`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 fimction of information 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 time of
`
`registration of said sofiware 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
`
`sofiware; said enabling key generated by a third party means of operation of a duplicate copy
`
`of said registration key generating means.
`
`18.
`
`The method of claim 17, wherein said registration key is also a function of the
`
`environment in which said sofiware is installed.
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 5
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`Petitioners Ex. 1016 Page 5
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`- 6 -
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`RICHARDSON, 111.
`Control No. 90/010,831
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`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.
`
`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 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.
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 6
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`Petitioners Ex. 1016 Page 6
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`

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`- 7 _
`
`Remarks
`
`RICHARDSON, HI.
`Control No. 90/010,831
`
`The ‘216 patent has 20 total claims, of which claims 1, 12, 17, 19 and 20 are
`
`independent claims. Claims 1-20 are subject to ex parte reexamination and stand rejected in
`
`the Office Action dated September 28, 2010 (“Office Action”). The Patent Owner, Uniloc
`
`Singapore Private Limited (‘fUniloc”) respectfully traverses the rejections. Based on the
`
`following remarks, Uniloc respectfully requests
`
`that
`
`all outstanding rejections be
`
`reconsidered and withdrawn.
`
`Section I provides a statement concerning the substance of the interview conducted
`
`on November 17,. 2010.
`
`Section II provides some relevant background information,
`
`including the status of the litigation and an overview of the claimed invention with reference
`
`to Declarations from Messrs. Richardson and Marwaha under 37 CFR § 1.132 (“Rule 132”).
`
`Section III addresses issues of law that pertain to the Office Action, claim construction, and
`
`this response. Section IV addresses the adopted substantive claim rejections from the Office
`
`Action, with reference to the Rule 132 Declaration from William Rosenblatt. Section V
`
`addresses objective indicia of non—obviousness with reference to the Rule 132 Declaration
`
`from Brad Davis.
`
`Also attached hereto are the following Exhibits:
`
`Exhibit A: Rule 132 Declaration of William Rosenblatt
`
`Exhibit B: Rule 132 Declaration of Ric B. Richardson
`
`Exhibit C: Rule 132 Declaration of Brad Davis
`
`Exhibit D: Rule 132 Declaration of Ravindra Marwaha
`
`Exhibit E: Transcript of Martin E. Hellman, Uniloc USA, Inc. et al. v.
`
`Microsofi Corp., C.A. No. 03-440 (D.R.I.)
`
`Exhibit F: Uniloc USA, Inc. et al. v. Microsoft Corp., 447 F.Supp.2d
`
`177 (D.R.I. 2006), Decision and Order Regarding Claim
`
`Construction
`
`Exhibit G: Uniloc USA et al. v. Microsoft Corp., Case No. 2008-1121,
`
`(Fed. Cir. 2008), Opinion, Including Affirmation of Claim
`
`Construction
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 7
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`Petitioners Ex. 1016 Page 7
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`- 8 -
`
`RICHARDSON, III.
`Control No. 90/010,831
`
`I.
`
`- STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
`
`An interview was held on Wednesday, November 17, 2010, with Primary Examiner
`
`Matthew Heneghan, and two conferees. Present at the interview for Uniloc were: Ric B.
`
`Richardson 111 (Inventor and Founder), Brad Davis (CEO, current Board member of Uniloc
`
`Singapore Private Limited), Sean D. Burdick (Uniloc Patent Counsel, Reg. No. 51,513),
`
`William Rosenblatt (Technical Expert), Robert G. Sterne (Reexam Counsel, Reg. No.
`
`28,912), Jon E. Wright (Reexam Counsel, Reg. No. 50,720), Robert W. Molitors (Reexam
`
`Counsel, Reg. No. 66,726), James L. Etheridge (Uniloc Outside Counsel, Reg. No. 37,614.)
`
`At the interview, Uniloc presented a PowerPoint presentation, a copy of which was
`
`. provided to the panel for the record. As outlined in the presentation, the following areas were
`
`discussed:
`
`— Introductions
`
`— Background of Invention Claimed in US. Patent No. 5,490,216
`— Overview of Uniloc
`V
`
`— Microsofi Alleged Infringement
`
`_
`
`— US. Patent No. 4,658,093 to Hellman in View of US. Patent No.
`
`5,291,598 to Grundy and Why Claims 1-20 are patentable over the
`
`Combination
`
`— Objective Indicia of Non—Obviousness
`
`The substance of the interview followed this agenda. No agreement was reached on
`
`the claims in reexamination.
`
`II.
`
`BACKGROUND INFORMATION
`
`A.
`
`Status of Concurrent Litigation
`
`Uniloc filed its initial suit against Microsoft Corporation in the United States Distriet
`
`Court for the District of Rhode Island in September 2003 for infringement of the ‘216 patent.
`
`See Uniloc USA, Inc. et al. v. Microsoft Corp., CA. No. 03-440 (D.R.I.).
`
`In October 2007,
`
`the Rhode Island District court granted summary judgment of non-infringement
`
`in
`
`Microsoft’s favor. Uniloc appealed to the United States Court of Appeals for the Federal
`
`Circuit.
`
`In August 2008, the Federal Circuit reversed and remanded the district court’s grant
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 8
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`Petitioners Ex. 1016 Page 8
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`- 9 -
`
`RICHARDSON, III.
`Control No. 90/010,831
`
`of summary judgment. See Uniloc USA et a]. v. Microsoft Corp, Case No. 2008—1121 (Fed.
`
`Cir. 2008).
`
`On remand, in April 2009, a jury awarded Uniloc $388 million in damages based on
`Microsoft’s infringement of the ‘216 patent. However, in September 2009, the district court
`
`granted Microsoft’s motion for judgment as a matter of law (JMOL) for non-infringement.
`
`Uniloc filed an appeal with the United States Court of Appeals for the Federal Circuit in
`
`February 2010. The issue currently on appeal to the Federal Circuit is whether the district
`
`court properly entered a JMOL in this case on infringement and associated damages. That
`
`case was argued on September 7, 2010.
`
`The issue of claim construction is not on appeal. The district court’s August 22, 2006,
`
`claim construction order is attached as Exhibit F. The Federal Circuit reviewed the district
`
`court’s claim construct de novo in its 2008 opinion and concluded that the “district court
`
`correctly construed the ‘licensee unique ID’ as a unique identifier associated with a licensee
`
`that can be, but is not limited to, personally identifiable information about the licensee or
`
`user.”
`
`(See, Exhibit G, p. 12.) Furthermore,
`
`the district court concluded that “neither
`
`Hellman‘nor Wolfe disclose use of unique user information in lieu of a hardware identifier
`
`based system.” Uniloc USA, Inc. v. Microsoft Corp, 640 F.Supp.2d 150, 182 (D.R.I. 2009.)
`
`B.
`
`Claimed Invention
`
`1.
`
`Background
`
`The concept behind the ‘216 patent was Ric Richardson’s idea of “try before you
`
`buy” sofiware. Mr. Richardson was involved in the computer music field in the early 1990’s.
`
`He owned the rights to a computer music program, One-Step, which he wanted to sell.
`
`However, music stores at that time were not interested in stocking computer sofiware. Mr.
`
`Richardson therefore had to figure out a method of distributing free samples of the program
`
`in a demonstration mode. Mr. Richardson wished to do so in the hopes that people would try
`
`the program and then be able to activate the sofiware. Activation would occur from the piece
`
`of media containing the demonstration version (e.g., a personal computer), after purchasing
`
`the rights to do so. (See, Richardson Dec., 1W.)
`
`During Mr. Richardson’s investigation, an Apple computer representative told Mr.
`
`Richardson that all machines coming off of the production line were “identical.” Mr.
`
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`Petitioners Ex. 1016 Page 9
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`Petitioners Ex. 1016 Page 9
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`- 10 -
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`RICHARDSON, III.
`Control No. 90/010,831
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`Richardson knew that could not be true. After some research, he discovered that there were
`
`ways to identify a “fingerprint” of a particular computer associated with a particular user that
`
`included information such as processor serial settings and branding, hard disk error maps, and
`
`information associated with the user. After additional research, and trial and error, Mr.
`
`Richardson drafied and filed a patent application in the Australian patent office in September
`
`1992. About one year later, in September 1993, he filed the application with the US. Patent
`
`and Trademark Office.
`
`(See, Richardson Dec., 118.) Mr. Richardson also enlisted the help of
`
`some developers to transform the ideas claimed in the ‘216 patent into an actual product and
`
`concurrently moved forward with Uniloc Corporation in order to market and further develop
`
`the product activation software concept. (See, Richardson Dec., 119.)
`
`Mr. Richardson then applied the new software product with the One-Step music
`
`sofiware, later renamed TrueTime, and set off to fulfill his goal of selling computer music
`
`software.
`
`(See, Richardson Dec., 1110.) But Mr. Richardson realized that companies were far
`
`more interested in applying the product activation software concept to their own software
`
`products. Companies wanted to know how Mr. Richardson could lock 3 computer program
`
`so people could use the software in a demonstration mode before deciding to purchase it.
`This locking prevented casual copying. Unlocking the sofiware (or enabling full use) relied
`
`on a registration system that used, in part, attributes of the individual and the individual’s
`
`own specific computer.
`
`(See, Richardson Dec., 1111.) Mr. Richardson’s focus accordingly
`
`shifted to corporate accounts with companies interested in the product activation software
`
`solution concept. His approach was to demonstrate the embedding of the software activation
`
`feature in a software title by adding the ‘216 patent activation software to an existing
`
`sofiware program, a process Mr. Richardson called “demorize.” Mr. Richardson would then
`
`, actually demonstrate to a‘prospective sofiware publisher how the product activation software
`
`solution sofiware worked with their actual program.
`In fact, at one demonstration with
`WordPerfect, they were sure Mr. Richardson was practicing some type of magic and could
`
`not believe such a concept worked. No one else had developed such a concept as product
`
`activation software; indeed, these early demonstrations even preceded the prevalence of the
`
`Internet. (See, Richardson Dec., 1112.)
`
`In 1993, Mr. Richardson demonstrated the product activation sofiware solution
`
`concept, based on the ‘216 patent technology, to a variety of manufacturing and software
`
`distribution companies.
`
`'One company was IBM. The day afier the first demonstration to
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 10
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`Petitioners Ex. 1016 Page 10
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`- 11 —
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`RICHARDSON, HI.
`Control No. 90/010,831
`
`IBM in Boulder, Colorado, Mr. Richardson received a partnership proposal that resulted in a
`
`marketing agreement that continued through 1996.
`
`(See, Richardson Dec., 1113.)
`
`(See,
`
`Marwaha Dec., 11114-8)
`
`Under the IBM partnership, one of Uniloc’s first successes was the sale of thousands
`
`of copies of a software package by the name of “First Aid,” developed by CyberMedia,
`
`which was featured on the cover of Windows Sources Magazine in 1994. Uniloc also
`
`developed a relationship with the publisher Ziff Davis to distribute unlockable versions of
`
`software. These were featured on the front cover of their magazines, including Windows
`
`Sources Magazine.
`
`(See, Richardson Dec., 1114.)
`
`In 1997-1998, Uniloc produced preloaded,
`
`lockable editions of popular sofiware
`
`products that were included on new personal computers. Distribution agreements had been
`
`reached with companies such as eMachines and Toshiba. Family PC magazine also featured
`
`Mr. Richardson’s unlockable software on the cover of their magazine in 2000.
`
`(See,
`
`Richardson Dec., 1115.) Uniloc prepared demonstration diskettes/CD5 for over 1000 products.
`
`Retail sales included “end-cap” displays in retail sofiware storefronts throughout the United
`
`States.
`
`(See, Richardson Dec., 1116.) By the end of 2001 Uniloc was responsible for the
`
`distribution of over 1.4 million copies of CDs with over 1 million products pre-loaded and
`
`distributed in e-machine computers that incorporated the ‘216 patent technology.
`
`(See,
`
`Richardson Dec., 1117.)
`
`Business continued to expand including new business relationships with companies
`
`including Toshiba. For example, all Toshiba laptops shipped by mid-2002 included a DVD
`
`with thirty locked software titles using the ‘216 patented technology.
`
`(See, Richardson Dec.,
`
`1118-)
`
`2.
`
`Brief overview of the claimed invention
`
`The ‘216 patent introduces the concept of controlling usage of software on a computer
`
`system by generating local and remote licensee unique IDs. A “local licensee unique ID” is
`
`generated for the intended licensee.
`
`It preferably combines information entered by a
`
`prospective user that
`
`is unique to that user, along with an identifier generated from
`
`information provided by the environment on which the protected software is to run.
`
`(See,
`
`Richardson Dec., 115.) The algorithm that generates the local licensee unique ID is duplicated
`
`at a remote location under the control of the licensor and generates a “remote licensee unique
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 11
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`Petitioners Ex. 1016 Page 11
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`— 12 -
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`RICHARDSON, 111.
`Control No. 90/010,831
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`ID” at the remote location. The local and remote licensee unique IDs are compared and if
`
`they match identically, the system will allow licensed operation (e. g., full, unrestricted use) of
`
`the software.
`
`(See, Richardson Dec., 116.)
`
`III.
`
`LEGAL STANDARDS
`
`The standard of review for determining patentability is “preponderance of the
`9
`
`evidence.’
`
`(MPEP § 706.1.) The examiner must weigh the evidence presented for and
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`against patentability and if it is more likely than not that the claims are patentable, they must
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`be allowed.
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`(Id.) Patentability is determined through the lens of one having ordinary skill in
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`the art at the time the application was filed. Phillips v. AWH Corp., 415 F.3d 1303, 1316
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`(Fed. Cir. 2005) (en banc.) Further, the scope of the claims in patent applications is to be
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`determined “not solely on the basis of the claim language, but upon giving claims their
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`broadest reasonable construction ‘in light of the Specification as it would be interpreted by
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`one of ordinary skill in the art.’” Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
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`1359, 1364 (Fed. Cir. 2004)).
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`A. Claim Construction
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`Despite the fact that Patent Owner in reexamination does not have the same freedom
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`to amend claims as applicants do during regular prosecution, the Office nonetheless uses the
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`“broadest reasonable interpretation” standard during reexamination. MPEP 2258.G; see also
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`In re Trans Texas Holdings, Corp, 498 F.3d 1290, 1292 (Fed. Cir. 2007). However, even
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`under that standard, the Office must still interpret “the scope of claims
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`not solely on the
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`basis of the claim language, but upon giving claims their broadest reasonable interpretation
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`‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’
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`MPEP 2111; citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (emphasis added);
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`see also, In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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`Indeed,
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`the Federal Circuit has stated that
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`the “PTO applies to verbiage of the
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`proposed claims the broadest reasonable meaning of the words in their ordinary usage as they
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`would be understood by one of ordinary skill
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`in the art,
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`taking into account whatever
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`enlightenment by way of definitions or otherwise that may be afforded by the written
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`description contained in applicant’s specification.” In re Morris, 127 F.3d 1048, 1054-55
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`(Fed. Cir. 1997) (emphasis added). Claim construction under the “broadest reasonable
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`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 12
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`Petitioners Ex. 1016 Page 12
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`— 13 -
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`_
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`RICHARDSON, 111.
`Control No. 90/010,831
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`construction” rubric is thus not an unfettered license to divorce the claims from the
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`specification of which they are a part. For instance, in In re Buszard, the Federal Circuit
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`found the PTO’s alleged “broadest reasonable interpretation” to be unreasonable where the
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`claims and the specification specifically supported the applicant’s construction and were
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`contrary to the Office’s construction. In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). It
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`is thus well settled that under the “broadest reasonable interpretation” standard, the Office is
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`still required to interpret the claims in a reasonable manner and in light of the specification.
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`B. Means Plus Function Limitations
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`Several claimed elements are presented in the functional format permitted by 35
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`U.S.C. § 112, paragraph 6, in “means-plus-function language.” (See, Office Action, p. .5.)
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`Where means—plus—function language is used to define characteristics, the “[d]isclosure may
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`be express, implicit, or inherent,” and “USPTO personnel are to give the claimed means plus
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`function limitations their broadest reasonable interpretation consistent with all corresponding
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`structures or materials described in the specification and their equivalents including the
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`manner in which the claimed functions are performed.” (lVlPEP 2106(II)(C); citing Kemco
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`Sales, Inc.,v. Control Papers Company, Inc., 208 F.3d 1352 (Fed. Cir. 2000).
`
`For example, the structure corresponding to the claim 1 term “local licensee unique
`3
`
`ID generating means,’
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`is disclosed in the ‘216 patent as structure corresponding to both
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`software, in the form of an algorithm, and hardware in the form of a summer. Specifically
`
`with respect to sofiware, the ‘216 patent states that the “algorithm, in this embodiment,
`combines by addition the serial number 50 with the software product name 64 and customer
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`information 65 and previous user identification 22 to provide registration number 66.” (See,
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`‘216 patent, 11:53-56.) Specifically with respect to hardware, the ‘216 patent states that, for
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`example, “[s]ummer 85 acts as a local licensee unique ID generating means by combining, by
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`addition, customer information C, product information P and serial number S in order to
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`provide a local licensee unique ID here designated Y.” (See, ‘216 patent 12:62-65.)
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`Based on the disclosed structure from the ‘216 patent specification, a person of skill
`
`in the art would readily appreciate that, for example, the “local licensee unique ID generating
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`means” of claim 1
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`is directed to the fimction of generating a local
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`licensee unigue
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`ID/regjstration key. And the corresponding structural component is a summation algorithm
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`or a summer as described in the specification, in addition to all equivalents. With respect to
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`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1016 Page 13
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`Petitioners Ex. 1016 Page 13
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`- 14 -
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`RICHARDSON, 111.
`Control No. 90/010,831
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`the “m licensee unique ID generating means,” the ‘216 specification similarly discloses
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`the corresponding structure both as a software algoritth and as hardware in the form of a
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`summer.
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`As noted,
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`the Office recognized the means-plus—function nature of some of the
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`claimed elements and specifically noted the corresponding structure in the ‘216 patent
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`specification. (Office Action p. 5.) But the Office did not explicitly recognize that a range of
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`equivalent structures may also fall within the claim scope. The district court’s 2008 claim
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`construction analysis for the means-plus—function claims is therefore set forth below for ease
`
`of reference.
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`District Court Construction
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`
`
`
`
`
`
`
`
`local
`“[T]he ‘216 Patent discloses as corresponding structure both software, in
`
`
`
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`licensee
`the form of an algorithm, see ‘216 Patent, col. 11,
`11. 53-56, and
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`hardware, in the form of a summer. See id at col. 12,