IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re reexam of: U.S. Patent 5,490,216 to
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`Confirmation No.: 2214
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`Art Unit: 3992
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`H
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`Examiner: HENEGHAN, Matthew E.
`Atty. Docket: 2914.00lREXO
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`% RICHARDSON, III
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`gig Reexam Control No.: 90/010,831
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`Zfiriied; January 22,2010
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`2 For: System for Software Registration
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`O E
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`05
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`D <
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`Response to Non-Final Office Action Dated January 18, 2011
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`Mail Stop Ex Parte Reexamination
`Central Reexamination Unit
`Commissioner for Patents
`PO Box 1450
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`Alexandria, VA 22313-1450
`
`Sir:
`
`9
`
`Patent Owner hereby replies to the Office Action in the above-captioned ex parte
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`reexamination dated January 18, 2011. The due date for reply is March 18, 2011. The Status
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`of the Claims is reflected in the listing of claims, which begins on page 4 of this paper.
`
`Remarks begin on page 9 of this paper.
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`It is not believed that any fees are required with this
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`response. But if any fees are necessary to prevent abandonment of this reexamination, then
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`such fees are hereby authorized to be charged to our Deposit Account No. 19-0036.
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`Petitioners Ex. 1018 Page 1
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`Petitioners Ex. 1018 Page 1
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`TABLE OF CONTENTS
`
`LISTING OF CLAIMS ................................................................................................ .. 4
`
`REMARKS .................................................................................................................. .. 9_
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`I.
`
`INTRODUCTION ............................................................................................. .. 10
`
`A. The Rejections in the Second Action Are All Based on a Legally Erroneous
`Claim Interpretation and a Factually Erroneous Analysis of Hellman .................. .. 10
`
`B. The Proposed Modification of Hellman in View of Grundy is Legally
`Imperrnissible. ....................................................................................................... .. 12
`
`C. The Office Improperly Dismissed Much of Uniloc’s Rule 132 Declaratory
`Evidence. ............................................................................................................... .. 13
`
`D. The Office Has Taken Several Inconsistent Positions in This Reexamination.
`14
`
`II. OVERVIEW OF REEXAM PROSECUTION .................................................. .. 15
`
`A.
`
`B.
`
`First Non-Final Office Action ....................................................................... .. 16
`
`Second Non-Final Action. ............................................................................. .. 17
`
`III.
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`RESPONSE TO THE ADOPTED SUBSTANTIVE CLAIM REJECTIONS 18
`
`A.
`
`Independent Claims 19 and 20 Are Not Anticipated by Hellman ................. .. 18
`
`B. Claims 1, 7-1 1, 19 and 20 Are Not Obvious Over Hellman Alone ............... .. 22
`
`C. Claims 1-20 Are Not Obvious Over Hellman In View of Grundy ................ .. 23
`
`1.
`
`Basis for the proposed combination .......................................................... .. 23
`
`The Examiner mischaracterized Hellman in supporting the purported
`2.
`motivation to combine. ...................................................................................... .. 25
`
`3.
`
`Examiner mischaracterized Grundy’s use of checksums. ......................... .. 27
`
`The proposed combination would fundamentally change the operation of
`4.
`Hellman in a way Hellman expressly forbids. ................................................... .. 28
`
`Even with proposed modification, Hellman still does not generate a licensee
`5.
`unique ID. .................................................................................... .; .................... .. 31
`
`D. Dependent Claims 2, 12 and 17 Are Also Not Obvious Over Hellman In View
`of Grundy ............................................................................................................... .. 32
`
`The Examiner mischaracterized Grundy in supporting the proposed
`1.
`motivation to combine. ...................................................................................... .. 32
`2.
`The Examiner has again mischaracterized Grundy’s use of checksums.
`33
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS ..................................... .. 34
`
`IV.
`
`A. Uniloc Has Conclusively Established the Commercial Success of At Least
`Independent Claim 19 ............................. .; ............................................................. .. 36
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`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1018 Page 2
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`Petitioners Ex. 1018 Page 2
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`1. Uniloc has conclusively established a nexus between independent claim 19
`and Microsoft’s Product Activation technology ................................................ .. 36
`
`2. Uniloc has conclusively established the commercial success of Microsoft’s
`Product Activation technology .......................................................................... .. 37
`3.
`Summary for Commercial Success ..............................
`........................... .. 38
`
`B. The ‘2l6 Patented Technology Met a Long-Felt Need ................................. .. 38
`
`C.
`
`Failure by Others. .....................................
`
`................................................... ..40
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`D. Conclusion with Respect to Objective Indicia of Non-Obviousness ............. .. 41
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`V.
`
`STATUS OF CONCURRENT LITIGATION .................................................. .. 41
`
`IMPROPER GRANT OF A SUBSTANTIAL NEW QUESTION OF
`VI.
`PATENTAB ILITY .................................................................................................... .. 42
`
`VII.
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`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW .................. .. 44
`
`CONCLUSION .......................................................................................................... .. 45
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`Atty. Dkt. No. 29l4.001REXO
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`Petitioners Ex. 1018 Page 3
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`Petitioners Ex. 1018 Page 3
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Listing of Claims
`
`Original claims 1-20 from U.S. Patent No. 5,490,216 to Richardson (“the ‘216
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`patent”) are subject to ex parte reexamination. No claims are added, cancelled or amended.
`
`1.
`
`(Patented) A registration system for licensing execution of digita! data in a
`
`use mode, said digital data executable on a platform, said system including local licensee
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`unique ID generating means and remote licensee unique ID generating means, said system
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`further including mode switching means operable on said platform which permits use of said
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`digital data in said use mode on said platform only if a licensee unique ID first generated by
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`said local
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`licensee unique ID generating means has matched a licensee unique ID
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`subsequently generated by said remote licensee unique ID generating means; and wherein
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`said remote licensee unique ID generating means comprises software executed on a platform
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`which includes the algorithm utilized by said local licensee unique ID generating means to
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`produce said licensee unique ID.
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`2.
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`(Patented) The system of claim 1, wherein said local
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`licensee unique ID
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`generating means generates said local
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`licensee unique ID by execution of a registration
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`algorithm which combines information in accordance with said algorithm, said information
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`uniquely descriptive of an intending licensee of said digital data to be executed in said use
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`mode.
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`3.
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`(Patented) The system of claim 2, wherein said mode switching means
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`permits operation of said digital data in said use mode in subsequent execution of said digital
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`data only if said licensee unique ID generated by said local licensee unique ID generating
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`means has not changed.
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`Atty. Dkt. No. 29l4.00lREXO
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`Petitioners Ex. 1018 Page 4
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`Petitioners Ex. 1018 Page 4
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`4.
`
`(Patented) The system of claim 3, wherein said local licensee unique ID
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`generating means comprises part of said digital data when executed on said platform.
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`5.
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`(Patented) The system of claim 4, wherein said mode switching means
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`comprises part of said digital data when executed on said platform.
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`6.
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`(Patented) The system of claim 5, wherein the information utilized by said
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`local licensee unique ID generating means to produce said licensee unique ID comprises
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`prospective licensee details including at least one of payment details, contact details and
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`name.
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`7.
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`(Patented) The system of claim 1, said system further including platform
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`unique ID generating means, wherein said mode switching means will permit said digital data
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`to run in said use mode in subsequent execution of said digital data on said platform only if
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`said platform unique ID has not changed.
`
`8.
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`(Patented) The system of claim 7, wherein said platform unique ID generating
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`means comprises part of said digital data when executed on said platfomi.
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`9.
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`(Patented) The system of claim 8, wherein said platform unique ID generating
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`means utilizes hard disc or other platform information to detemiine said platform unique ID.
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`10.
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`(Patented)
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`The system of claim 1, wherein said platform comprises a
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`computer operating system environment.
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`11.
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`(Patented) The system of claim 10, wherein said digital data comprises a
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`software program adapted to run under said operating system environment.
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`12.
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`(Patented) A registration system attachable to software to be protected, said
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`registration system generating a security key from information input to said software which
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`uniquely identifies an intended registered user of said software on a computer on which said
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`Atty. Dkt. No. 2914.00lREXO
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`Petitioners Ex. 1018 Page 5
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`Petitioners Ex. 1018 Page 5
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`software is to be installed; and wherein said registration system is replicated at a registration
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`authority and used for the purposes of checking by the registration authority that
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`the
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`information unique to the user is correctly entered at the time that
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`the security key is
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`generated by the registration system.
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`13.
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`(Patented) The registration system of claim 12, wherein said security key is
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`generated by a registration number algorithm.
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`14.
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`(Patented) The registration system of claim 13, wherein said registration
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`number algorithm combines information entered by a prospective registered user unique to
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`that user with a serial number generated from information provided by the environment in
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`which the software to be protected is to run.
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`15.
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`(Patented) The registration system of claim 12, wherein said registration
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`system checks at the time of boot of said software asito whether it is a first boot of the
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`software to be protected or a subsequent boot, and, if a subsequent boot is detected, then
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`environment and user details are compared to determine whether the program reverts to a
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`demonstration mode and a new user registration procedure is to commence or a full version
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`I'LII'l.
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`16.
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`(Patented) The registration system of claim 15, wherein said environment
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`details comprise at least one element which is not user—configurable on the platform.
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`17.
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`(Patented) A method of control of distribution of software, said method
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`comprising providing mode-switching means associated with said software adapted to switch
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`said software between a fully enabled mode and a partly enabled or demonstration mode, said
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`method further comprising providing registration key generating means adapted to generate a
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`registration key which is a function of infomiation unique to an intending user of the
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`Atty. Dkt. No. 29l4.001REXO
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`Petitioners Ex. 1018 Page 6
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`Petitioners Ex. 1018 Page 6
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`RICHARDSON, III
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`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`software; said mode-switching means switching said software into fully enabled mode only if
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`an enabling key provided to said mode-switching means by said intending user at the time of
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`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
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`software; said enabling key generated by a third party means of operation of a duplicate copy
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`of said registration key generating means.
`
`18.
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`(Patented) The method of claim 17, wherein said registration key is also a
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`function of the environment in which said software is installed.
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`19.
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`(Patented) A remote registration station incorporating remote licensee unique
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`ID generating means, said station forming part of a registration system for licensing
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`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
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`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.
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`(Patented) A method of registration of digital data so as to enable execution of
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`said digital data in a use mode, said method comprising an intending licensee operating a
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`registration system for licensing execution of digital data in a use mode, said digital data
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`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
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`Atty. Dkt. No. 29l4.00lREXO
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`Petitioners Ex. 1018 Page 7
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`Petitioners Ex. 1018 Page 7
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`RICHARDSON, III
`
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`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. 2914.00lREXO
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`Petitioners Ex. 1018 Page 8
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`Petitioners Ex. 1018 Page 8
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`Remarks
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Original claims 1-20 from U.S. Patent No. 5,490,216 to Richardson (“the ‘216
`
`patent”) are subject to ex parte reexamination. The reexamination was ordered on April 9,
`
`2010.
`
`(Reexam Order.) In the first Office action dated September 28, 2010 (“First Action”),
`
`claims 1-20 were rejected solely under 35 U.S.C. § 103(a) over U.S. Patent No. 4,658,093 to
`
`Hellman in View of U.S. Patent 5,291,598 to Grundy.‘
`
`(First Action, p. 6.) An in-person
`
`interview was conducted on November 17, 2010. The patent owner Uniloc then responded
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`with a timely reply on November 29, 2010 (“Reply”). The Reply was supported by four
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`declarations under 37 C.F.R. § 1.132 (“Rule 132”) from Ravinda Marwaha, Brad Davis, Ric
`
`B. Richardson and William R. Rosenblatt.
`
`In response to the Reply, the Office issued a second non-final Office action dated
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`January 18, 2011 (“Second Action”).
`
`In the Second Action, claims 1-20 remain rejected as
`
`obvious over Hellman in View of Grundy. The Office also added two additional grounds of
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`rejection for certain claims. Specifically, independent claims 19 and 20 now stand rejected
`
`under 35 U.S.C. § 102(b) over Hellman, while claims 1, 7-11, 19 and 20 stand rejected under
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`35 U.S.C. § 103(a) as obvious over Hellman—a single reference § 103 rejection. Uniloc
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`respectfully traverses all
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`three rejections and requests that
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`they be reconsidered and
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`withdrawn.
`
`' In the First Action, the Examiner misstated the patent numbers for both Hellman and
`Grundy.
`(First Action, p. 4.) Those errors were not corrected in the Second Action. The
`correct patent numbers are listed above.
`
`Atty. Dkt. No. 29l4.00lREXO
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`Petitioners Ex. 1018 Page 9
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`Petitioners Ex. 1018 Page 9
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`RICHARDSON, III
`
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`I.
`
`INTRODUCTION
`
`The Rejections in the Second Action Are All Based on a Legally
`A.
`Erroneous Claim Interpretation and a Factually Erroneous Analysis of Hellman.
`
`In supporting its new grounds of rejection, the Office in the Second Action has
`
`expanded its construction of “licensee unique ID generating means” to encompass an
`
`unreasonably broad scope. The new construction reads: “an ID . .. created that is associated
`
`with a request that includes information provided by and specific to a user, such as billing
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`information.” (Second Action, p. 14; emphasis added.) By decoupling the creation of the
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`claimed “licensee unique ID” from any information uniquely associated with an intended
`
`licensee, and instead asserting that it need only be “associated with a request” that includes
`
`user specific information, the Office has impermissibly stretched the claim scope beyond that
`
`permitted by the broadest reasonable interpretation standard.
`
`In re Suitco Surface, 603 F .3d
`
`1255 (Fed. Cir. 2010). This impermissibly broad construction forms the basis for each of the
`
`three separate grounds of rejection set forth in the Second Action.
`
`In applying this new construction, the Office asserts that Hellman’s authorization A
`(or check value C) is “functionally equivalent to the means disclosed in the ‘2l6 patent.”
`
`(Second Action, p. 9.) But this directly conflicts with governing case law for claims recited
`
`under 35 U.S.C. §_ 1 12(6), which requires identity of function, not equivalent function.
`
`Pennwalt Corp. v. Durand- Wayland, Inc., 833 F.2d 931, 934 (Fed. Cir. 1987) (en banc). The
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`Office is required to interpret means-plus function claims in the same manner as the Courts.
`
`In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994).
`
`To suggest
`
`that “functional
`
`equivalence” is the standard for determining whether a reference anticipates a feature claimed
`
`under the statutory provisions of § 1 12(6) is contrary to law.
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`Atty. Dkt. No. 29l4.00lREXO
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`Petitioners Ex. 1018 Page 10
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`Petitioners Ex. 1018 Page 10
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`‘
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Regardless of the Office’s application of its new construction of “licensee unique ID
`
`generating means,” the Office has also factually mischaracterized Hellman with respect to
`
`that term. Contrary to the Off1ce’s interpretation, the BILLING INFORMATION is not
`
`associated with authorization A (or check Value C).
`
`(See, Hellman FIG. 2; 6:16-30; 7:6-13;
`
`FIG. 7; and 10: 14-32.) Nor is any user specific information input to Hellman’s cryptographic
`
`function generators that generate A and C.
`
`(Id.)
`
`Indeed, Hellman explicitly states that
`
`authorization A is not associated with a user, but rather is base unit (e.g., a personal
`
`computer)specif1c. (Hellman, 12:1-9.)
`
`The Federal Circuit came to the same conclusion in a decision rendered two weeks
`
`prior to the Second Action when it considered whether the very same Hellman reference
`
`anticipated the very same claim limitation in an invalidity charge against the very same patent
`
`at issue here. The Federal Circuit stated:
`
`The “user billing information” in [Hellman] is not an input into the hash
`function and is thus irrelevant in determining whether [Hellman] discloses the
`“licensee unique ID” and “licensee unique ID generating means” elements of
`the ‘216 patent.
`
`Uniloc USA, Inc. v. Microsoft Corp, --- F.3d ---, 2011 WL 9738, *56, n. 3 (Fed. Cir. 2011).
`
`While a court's decision that a patent is not invalid is generally not binding on the Office, the
`
`situation in this case is unusual. The Office ought to give deference to a Federal Circuit
`
`decision where it ruled on the same issue now before the central reexamination unit —
`
`whether Hellman anticipates claim 19 of the ‘216 patent. This is especially true where the
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`claim terms at issue are drafted under § 112(6) and the Office must interpret this term in the
`
`same manner as the courts. In re Donaldson, 16 F.3d 1 189, 1 193 (Fed. Cir. 1994).
`
`The Off1ce’s legally erroneous interpretation of “licensee unique ID” and factually
`
`erroneous interpretation of Hellman together form the basis for all three separate grounds of
`
`Atty. Dkt. No. 2914.001REXO
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`Petitioners Ex. 1018 Page 11
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`Petitioners Ex. 1018 Page 11
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`rejection set forth in the Second Action. On either basis alone, all three rejections should be
`
`reconsidered and withdrawn.
`
`The Proposed Modification of Hellman in View of Grundy is Legally
`B.
`Impermissible.
`
`The proposed combination of Hellman and Grundy is legally flawed.
`
`First,
`
`the
`
`Examiner mischaracterized Hellman in supporting the purported motivation to combine
`
`Hellman and Grundy.
`
`In searching for a motivation to use a simple algorithm in place of
`
`I-Iellman’s cryptographic functions, the Examiner mistakenly pointed to a portion of Hellman
`
`referring to Hellman’s hash function 22.
`
`Second, the Examiner mischaracterized Grundy’s use of checksums in supporting the
`
`proposed combination. Third, no one skilled in the art would have modified Hellman’s
`
`cryptographic function generator
`
`to include Gn1ndy’s checksum algorithms because
`
`Grundy’s checksums are an entirely different class of algorithm than the cryptographic
`
`functions that Hellman unambiguously states are required for his invention.
`
`Finally, the proposed modification to Hellman still does not address Hellman’s main
`
`deficiency that it does not use any information uniquely associated with an intended licensee
`
`to generate its authorization A (or check value C).
`
`Thus, even with the proposed
`
`modification in view of Grundy, Hellman’s system still does not generate the claimed
`
`“licensee unique ID,” which as a matter of law is evidence that the invention is not obvious.
`
`MPEP 2143 ( Obviousness requires “a finding that the prior art
`
`included each element
`
`claimed, although not necessarily in a single prior art reference, with the only difference
`
`between the claimed invention and the prior art being the lack of actual combination of the
`
`elements in a single prior art reference”). Any one of these errors are sufficient to warrant
`
`reversal of the § 103 rejection of Hellman in view of Grundy.
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`Atty. Dkt. No. 2914.001 REXO
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`Petitioners Ex. 1018 Page 12
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`Petitioners Ex. 1018 Page 12
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`_
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`The Office Improperly Dismissed Much of Uniloc’s Rule 132 Declaratory
`C.
`Evidence.
`A
`
`The Office also improperly dismissed the majority of Uniloc’s Rule 132 evidence
`7
`proffered in support of its validity positions as “unpersuasive.’ For example, the Second
`
`Action failed to state with any specificity why Rosenblatt’s declaratory evidence was not
`
`persuasive, as it was required to do by the Office’s own rules. MPEP 716.01. General
`
`statements such as “the declaration lacks technical validity” or “the evidence is not
`
`commensurate in scope with the claims” without explanation supporting such findings are
`
`unacceptable.
`
`Id. The Second Action therefore breached the rules by summarily dismissing
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`Rosenblatt’s declaration as consisting “entirely of opinions.” Indeed, the Federal Circuit has
`
`stated that “we are aware of no reason why opinion evidence relating to a fact issue should
`
`not be considered by an examiner.” In re Alton, 76 F.3d 1 168, 1175, n. 10 (Fed. Cir. 1996).
`
`In fact, much of that evidence was relevant and probative to the validity analysis, and
`
`conformed to the Office’s own standards for declaratory evidence. Opinion on the ultimate
`
`legal conclusion is not entitled to any weight, although the underlying basis for the opinion
`
`may be given some weight.
`
`In re Chilowsky, 306 F.2d 908 (CCPA 1962). Although a
`
`declarant’s opinion on the ultimate legal issue is not evidence in the case, “some weight
`
`ought to be given to a persuasively supported statement of one skilled in the art on what was
`
`not obvious to him.” In re Lindell, 385 F.2d 453 (CCPA 1967).
`
`The ultimate determination of patentability must be based on consideration of the
`
`entire record by a preponderance of the evidence.
`
`In re Oetiker, 977 F.2d 1443 (Fed. Cir.
`
`1992). Each piece of rebuttal evidence should not be evaluated for its ability to “knock
`
`down” the prima facie case. All of the competent rebuttal evidence, taken as whole, should
`
`be weighed against the evidence supporting the prima facie case.
`
`In re Piasecki, 745 F .2d
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`Atty. Dkt. No. 29l4.00lREXO
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`Petitioners Ex. 1018 Page 13
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`Petitioners Ex. 1018 Page 13
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`1468 (Fed. Cir. 1984). Expert opinion supported by documentary evidence may be given
`
`weight.
`
`In re Carroll, 601 F.2d 1184 (CCPA 1979). Further, evidence of non-technological
`
`nature is pertinent to the conclusion of obviousness.
`
`In re Piasecki, 745 F .2d 1468, 1473
`
`(Fed. Cir. 1984) (finding that the declarations of those skilled in the art regarding the need for
`
`the invention and its reception by the art were improperly discounted by the Board.) Office
`
`personnel should avoid giving evidence no weight, except in rare circumstances. See In re
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`Alton, 76 F.3d at1174—75.
`
`Uniloc stands behind the sworn declarations it submitted in support of its response to
`
`the First Action. Uniloc requests that the Office reconsider its dismissal of that evidence.
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`Finally, in support of the present response to the Second Action, Uniloc has submitted a
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`supplemental declaration by William Rosenblatt (“Rosenblatt Supp. Dec.”) and a declaration
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`by Dr. Udo Pooch (“Pooch Dec.”).
`
`The Office Has Taken Several Inconsistent Positions in This
`D.
`Reexamination.
`
`The rejections under sections 102 and 103 are inconsistent with respect
`
`to the
`
`interpretation of Hellman. For instance, in the § 102 rejection, the Second Action alleges that
`
`He1lman’s authorization A or C is “effectively specific to a licensee” (Second Action, p. 9),
`
`while in the § 103 rejection, the Examiner states that “Hellman does not disclose that the
`
`information being combined in the algorithm is uniquely descriptive of an intended licensee,
`
`but merely the intended licensee’s computer.” (Office Action, p. 15). These statements are
`
`contradictory. One implies that Hel1man’s authorization is effectively specific to a licensee,
`
`while the other acknowledges that it is not.
`
`Uniloc’s consistent position, which as a matter of law has been confirmed by the
`
`Federal Circuit,
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`is that
`
`the claimed “licensee unique ID” must be “a unique identifier
`
`Atty. Dkt. No. 2914.00lREXO
`
`Petitioners Ex. 1018 Page 14
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`Petitioners Ex. 1018 Page 14
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`

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`- 15 -
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`'
`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
`
`associated with a licensee.” Uniloc v. Microsofi‘, Case No. 03-440S, slip op. at 2] (D.R.I.
`
`2006). To accomplish this, there must be some input to the means for generating the claimed
`
`“licensee unique ID” that characterizes the intended user. He1lman’s cryptographic function
`
`generator has no such input and, as the Examiner correctly acknowledged (Second Action, p.
`
`20), its output is solely descriptive of the licensee’s computer.
`
`(See, Hellman, 6:16 - 7:2.)
`
`Therefore, even under a broadest reasonable interpretation standard, Hel1man’s cryptographic
`
`function generator does not
`7
`generating means.’ Uniloc’s interpretation is the more reasonable position and should be
`
`(and cannot) anticipate the claimed “licensee unique ID
`
`adopted by the Office as it was by the Federal Circuit.
`
`The Office is also inconsistent in its interpretation of Grundy.
`
`In the Reexam Order,
`
`the Examiner stated that “[c]hecksums are not unique fields, even if they are at least in part
`
`derived from unique data.” (Reexam Order, p. 9.) In the Second Action, the Examiner stated
`
`that Grundy’s “unique ID, a registration code, is produced by performing a checksum of the
`
`user data component
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`fields.”
`
`(Second Action, p.
`
`14.)
`
`These two statements are
`
`contradictory. The first states that Grundy’s checksums are not unique; the second states that
`
`that Grundy’s checksum can produce a unique ID. Uniloc submits that based on the
`
`Examiner’s statement in the Order, Grundy’s data validation checksums do not produce a
`
`unique ID that could be used by Hellman.
`
`II.
`
`Overview of Reexam Prosecution
`
`Uniloc provides below an overview of the prosecution to date in this ex parte
`
`reexamination.
`
`Atty. Dkt. No. 2914.001REXO
`
`Petitioners Ex. 1018 Page 15
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`Petitioners Ex. 1018 Page 15
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`

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`- 16 -
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
`
`A.
`
`First Non-Final Office Action
`
`In the First Action, the Office attempted to equate Hellman’s “cryptographic function
`
`generator” to the claimed “licensee unique ID generating means” in the ‘216 patent.
`
`(First
`
`Action, p. 6.) It is undisputed that this feature is recited in means-plus-function format under
`
`35 U.S.C. § 1 12(6).
`
`In the First Action, the Office identified the corresponding structure as a
`
`hardware summer and recognized that the summer couldialso be implemented in software.
`
`(First Action, p. 5.) But the Office did not explicitly identify the function, as it was required
`
`to do, and therefore made no explicit finding regarding identity of function. All the Office
`
`did was parenthetically equate the “licensee unique ID generating means” to He1lman’s
`
`cryptographic function generator.
`
`(First Action, p. 6.)
`
`It provided no further explanation
`
`regarding the claimed function. The only thing missing from Hellman, according to the
`
`Office, was the corresponding‘ structure—namely,
`
`the summer.
`
`For that,
`
`the Office
`
`inconsistently relied on Grundy’s checksum (First Action, p. 7) despite its earlier
`
`acknowledgement that “checksums are not unique fields” (Order Granting Reexam, p. 9).
`
`In reply, Uniloc argued that Hellman did not teach the claimed function—that is,
`
`generation of the claimed “licensee unique ID” in claims 1, 19 and 20, the “security key” in
`
`claim 12, and the “registration key” and “enabling key” in claim 17. The basis for Uniloc’s
`
`position was that none of the inputs to Hellman’s cryptographic function generator included
`
`_ any information that was uniquely associated with the intended licensee; and without such
`
`input, it could not generate a “licensee unique ID.” (Reply, pp. 17-25.)
`
`Uniloc also argued that Grundy’s checksum did not generate “a licensee unique ID”
`
`because Grundy’s checksum algorithm, by its very nature, destroys any uniqueness.
`
`(Reply,
`
`pp. 26-28.) Because neither reference disclosed the claimed function—i.e., generation of a
`
`Atty. Dkt. No. 2914.001REXO
`
`Petitioners Ex. 1018 Page 16
`
`Petitioners Ex. 1018 Page 16
`
`

`
`— 17 -
`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
`
`licensee unique ID——Uniloc argued that the combination of references could not render
`
`obvious the independent claims. Uniloc set forth its position at the November 17, 2010 in-
`
`person interview and properly supported its Reply with Rule 132 declarations.
`
`B.
`
`Second Non-Final Action.
`
`In the Second Action,
`
`the Office shifted its position and set forth a new claim
`
`construction for the “licensee unique ID generating means.” Specifically, the Office is now
`
`construing the term “licensee unique ID” to mean “an ID remotely created that is associated
`
`with a request that includes information provided by and specific to a user, such as billing
`7
`
`information.’
`
`(Second Action, p. 9; emphasis added.)
`
`In applying that construction, the
`
`Examiner asserted that Hellman’s authorization A was “effectively specific to the licensee”
`
`and was therefore “functionally equivalent to the means disclosed in the ‘216 patent.” (Id. at
`
`9.) “Functional equivalence” is not the correct legal standard. Pennwalt v. Durand- Wayland,
`
`Inc., 833 F.2d 931, 934 (Fed. Cir. 1987) (en banc). But based on this legally flawed
`
`construction, the Office now asserts that Hellman anticipates independent claims 19 and 20
`
`under 35 U.S.C. § 102(b)—a position already rejected by a Federal District Court and
`
`affirmed by the Federal Circuit.
`
`The remaining rejections are largely based on the same reasoning.
`
`The only
`
`difference between the other two rejections, according to the Examiner, appears to be
`
`“whether or not the scope of the terms ‘local licensee unique ID generating means’ and
`
`‘remote licensee unique ID generating means’ encompasses imp