`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTIVIENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, V'uginia 2313-1450
`ww.usplo.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`‘ CONFIRMATION NO.
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`90/010,831
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`01/22/2010
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`5,490,216
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`2914.001REXO
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`2214
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`25111
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`7590
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`08/05I201 I
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`J
`
`V
`
`EXAMINER
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, N.W.
`
`DATE MAILED: 08/05/201 1
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`—
`PTO 90c (R
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`ev.
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`03
`10/
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`)
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`Petitioners Ex. 1019 Page 1
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`Petitioners Ex. 1019 Page 1
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`

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`United States Patent and Trademark Office P.0. Box1450
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`Commissioner for Patents
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`Alexandria. VA 22313-1450
`vwwvusptogw
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`.
`...............
`Kyle Rinehait
`Klarquist Sparkman, LLP
`One Wond Trade Center, Suite 1600
`121 SW. Salmon Street
`Portland, OR 97204
`
`5
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`MAM-ED
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`AUG U 5 2U 1 1
`CENTRAL
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`REEXAM'V
`u ATIOM UNIT
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/010 831.
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`PATENT NO. 5 490 216.
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`ART UNIT 3992.
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`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)
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`Petitioners Ex. 1019 Page 2
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`Petitioners Ex. 1019 Page 2
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`

`

`
`
`Notice of Intent to Issue
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`Ex Parte Reexamination Certificate
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`Control No.
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`Patent Under Reexamination
`
`
`
`Examiner
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`Art Unit
`
`_--
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`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`1. El Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CF R 1.313(a). A Certificate will be
`issued in view of
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`
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`
`
`
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`
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`(a) IX Patent owner's communication(s) filed: 18 March 2011.
`(b) [I Patent owner’s late response filed:
`.
`(c) [3 Patent owner’s failure to file an appropriate response to the Office action mailed:
`(d) [I Patent owner’s failure to timely file an Appeal Brief (37 CFR 41.31).-
`(e) D Other:
`Status of Ex Parte Reexamination:
`
`(f) Change in the Specification: E] Yes IE No
`(9) Change in the Drawing(s):
`[:1 Yes E No
`(h) Status of the Claim(s):
`
`(1) Patent claim(s) confirmed: fl.
`(2) Patent claim(s) amended (including dependent on amended claim(s)):
`(3) Patent claim(s) canceled:
`.
`(4) Newly presented claim(s) patentable:
`(5) Newly presented canceled claims:
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`(6) Patent claim(s) El previously CI currently disclaimed:
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`(7) Patent claim(s) not subject to reexamination:
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`
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`. A. Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`
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`to avoid processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for
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`Patentability and/or Confirmation."
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`3. E Note attached NOTICE OF REFERENCES CITED (PTO-892).
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`4. CI Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/OB substitute).
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`5. [j The drawing correction request filed on
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`is: E] approved
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`[:1 disapproved,
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`6. [j Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)—(d) or (f).
`a)[:l All
`b)[:] Some“
`c)I:I None
`of the certified copies have
`El been received.
`.
`I:I not been received
`[3 been filed in Application No.
`[:1 been filed in reexamination Control No.
`[:1 been received by the International Bureau in PCT Application No
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`* Certified copies not received:
`
`7. [:1 Note attached Examiner's Amendment.
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`8. CI Note attached Interview Summary (PT0474).
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`
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`9. C] Other: __
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`
`
` cc: Reuester ifthird - re-ucster
`
`US. Patent and Trademark Office
`pT0L_459 (Rev. 05-10)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20110711
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`Petitioners Ex. 1019 Page 3
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`Petitioners Ex. 1019 Page 3
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`

`

`Application/Control Number: 90/010,831
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`Page 2
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`Art Unit: 3992
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`DETAILED ACTION
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`Reexamination
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`In response to the previous office action, the Patent Owner filed a Request for
`
`Reconsideration on 18 March 2011.
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`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
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`proceeding. The third party requester is also reminded of the ability to similarly apprise
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`the Office of any such activity or proceeding throughout the course of this reexamination
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`proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
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`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
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`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
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`ex parte reexamination proceedings "will be conducted with special dispatch" (37
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`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
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`for in 37 CFR 1.550(c).
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`Claims 1-20 have been examined.
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`Petitioners Ex. 1019 Page 4
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`Petitioners Ex. 1019 Page 4
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`

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`Application/Control Number: 90/010,831
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`Page 3
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`Art Unit: 3992
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`Claim Construction
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`Claim 7 recites “said platform unique ID” in line 5. It is not clear to what this
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`limitation refers. It is being presumed that this is a field produced by the platform unique
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`ID generating means.
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`Claim 12 lacks a transitional phrase. It is being presumed that the limitations of
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`the claim comprise all those beginning with “said registration system ..." In line 2 and
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`the limitations have been recited in an open-ended manner.
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`Means Plus Function Limitations
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`Several means plus function limitations that are being treated under 35 U.S.C. 112,
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`sixth paragraph appear in the claims of the ‘216 patent. They are support by the
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`specification as follows:
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`local licensee unique ID generating means (claims 1, 19, 20): a hardware summer (see
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`figure 10 and column 12, lines 62—65), including supporting software, with inputs (see
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`column 12, lines 51—61), may be implemented in software, column 13, lines 42-48).
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`Petitioners Ex. 1019 Page 5
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`Petitioners Ex. 1019 Page 5
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`

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`Application/Control Number: 90/010,831
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`Page 4
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`Art Unit: 3992
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`remote licensee unique ID generating means (claims 1,19, 20): a remote hardware
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`summer (see figure 10 and column 13, lines 2-10), may be implemented in software,
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`column 13, lines 42-48)
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`mode switching means (claims 1, 19, 20), mode-switching means (claim 17): two
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`hardware gates and a comparator that determine software flow, controlled by a relay,
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`which is driven by software (see column 13, lines 22-40, may be implemented in
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`software, column 13, lines 42—48).
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`platform unique ID generating means (claim 7): code for creating the platform unique ID
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`(see column 5, lines 57-64), read from a digital code reading device (see column 12,
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`lines 46-50).
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`registration key generating means (claim 17): a hardware summer (see figure 10 and
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`column 12, lines 62-65), with inputs (see column 12, lines 51-61), may be implemented
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`in software, column 13, lines 42-48).
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`The term “third party means of operation" in claim 17 is not being treated as a 35 U.S.C.
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`112, sixth paragraph limitation because it does not have a function associated with the
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`means, other than the broad term "operation."
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`Allowable Subject Matter
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`Claims 1-20 are confirmed.
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`Petitioners Ex. 1019 Page 6
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`Petitioners Ex. 1019 Page 6
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`

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`Application/Control Number: 90/010,831
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`Page 5
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`Art Unit: 3992
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`‘
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`The following is an examiner's statement of reasons for patentability and/or
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`confirmation of the claims found patentable in this reexamination proceeding:
`
`During reexamination, claims are given the broadest reasonable interpretation
`
`consistent with the specification and limitations in the specification are not read into the
`
`claims (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)). Where there
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`exists a final decision by the Court of Appeals for the Federal Circuit regarding the
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`construction of claims, an interpretation is not reasonable where it is inconsistent with
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`that decision. The Patent Owner has persuasively argued that, based on such decisions
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`regarding the ‘216 patent, Hellman cannot be reasonably construed as teaching to a
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`local licensee unique ID generating means or a remote licensee unique ID generating
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`means.
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`The licensee unique ID generated by the means recited in each of the claims
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`must be derived from at least piece of information that is specific to the user, such as
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`name, billing information, or product information unique to the instantiation entered by
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`the user. The information cannot be specific to the computer or independently
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`generated by the computer. Hellman's ID has four inputs: a computer-specific key (SK),
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`a number of uses requested (N), a random number generated by the computer (R), and
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`a hash of a code for the type of software package, which is general to all installations of
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`that package (H). Since none of these are user-specific, Hellman’s algorithm does not
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`,generated the claimed licensee unique ID.
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`Petitioners Ex. 1019 Page 7
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`Petitioners Ex. 1019 Page 7
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`

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`Application/Control Number: 90/010,831
`
`Page 6
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`Art Unit: 3992
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`It is also noted that the means itself must be an algorithm that, at least to some V
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`extent, must comprise a summation. The means provided by Hellman for combining the
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`fields is DES, an encryption algorithm that does not involve summation; alternatively,
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`Hellman suggests that digital signatures may be used (see Hellman, column 11, lines
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`42—47). Hellman further stresses that faster cryptographic alternatives could also be
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`used (see column 7, line 67 to column 8, line 12). Given that there were a finite number
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`of such algorithms available at the time of the Patent Owner's invention, it would have
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`been obvious at that time to try any recognized alternative in the implementation of
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`Hellman. As the Federal Circuit has pointed out, the MD5 algorithm (described in RFC
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`1321, attached to this action) could be such a means.
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`‘ Of the other art of record, the only'lfhnzi suggests that use of user-specific
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`information in the computation of fields is Grundy. The Patent Owner has persuasively
`
`argued that the summation disclosed by Grundy is used in the context of merely
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`verifying the correctness of information related to the user and is not being used to
`
`generate an ID per se. Since the information is not being used for the same purpose,
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`one skilled in the art therefore would not use the algorithm of Grundy as part of the
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`generation of the claimed licensee unique ID.
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`Any comments considered necessary by PATENT OWNER regarding the above
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`statement must be submitted promptly to avoid processing delays. Such submission by
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`the patent owner should be labeled: "Comments on Statement of Reasons for
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`Patentability and/or Confirmation" and will be placed in the reexamination file.
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`Petitioners Ex. 1019 Page 8
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`Petitioners Ex. 1019 Page 8
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`

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`Application/Control Number: 90/010,831
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`Page 7
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`Art Unit: 3992
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`Declarations
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`The declaration under 37 CFR 1.132 filed 18 March 2011 by Dr. Udo Pooch is
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`sufficient to overcome the rejection of claims 1-20 based upon Dr. Pooch's argument
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`that it would be improper to combine the references in the manner of the claimed
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`invention.
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`The declaration under 37 CFR 1.132 filed 18 March 2011 by Dr. William R.
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`Rosenblatt, in which secondary considerations for non-obviousness have been
`
`asserted, has been considered. However, we need not reach the issues raised in that
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`declaration because the other evidence discussed above sufficiently supports a finding
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`of non-obviousness.
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`Response to Arguments
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`Applicant’s arguments, see Remarks, filed 18 March 2011, with respect to the
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`rejections under 35 U.S.C. 102 and 103 have been fully considered and are persuasive.
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`The rejections of the claims have been withdrawn.
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`Petitioners Ex. 1019 Page 9
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`Petitioners Ex. 1019 Page 9
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`

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`Application/Control Number: 90/010,831
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`Page 8
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`Art Unit: 3992
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`Conclusion
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`All correspondence relating to this ex parte reexamination proceeding should be directed:
`By Mail to: Mail Stop Ex Pane Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`PO. 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 httgszllsgonal.usgto.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 Heneghan/
`
`Primary Examiner, USPTO AU 3992
`
`Conferees:
`
`/EBK/
`
`JESSICA HARRISON
`SUPERVISORY PATENT EXAM
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`Petitioners Ex. 1019 Page 10
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`Petitioners Ex. 1019 Page 10
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`