UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box.l450
`Alexandria. Virginia 22313-1450
`wwwiuspuxgov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,179
`
`03/06/2012
`
`5490216
`
`RE-02-SA-216
`
`5223
`
`759°
`96°“
`Uniloc USA Inc.
`2151 Michelson Ste. 100
`Irvine, CA 92612
`
`°3’29”°'2
`
`F
`
`.
`
`DATE MAILED: 03/29/2012
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`‘
`
`PTO-90c (Rev. 10/03)
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`Petitioners Ex 1020 Page 1
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`Petitioners Ex. 1020 Page 1
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`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`. q
`
`_.-
`E
`.
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`Po. Box 1 450
`Alexandria, VA 22313-1450
`wwuuxptooov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
`
`INTELLECTUAL PROPERTY DEPARTMENT
`
`P.O. BOX 10064
`
`MCLEAN, VA 22102-8064
`
`EXPARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/012 179.
`
`PATENT NO. 5490216.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
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`Petitioners Ex. 1020 Page 2
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`Petitioners Ex. 1020 Page 2
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`

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`Control No.
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`90/012,179
`
`Examiner
`
`Patent Under Reexamination
`
`
`
`5490216
`
`Art Unit
`
`ANDREW NALVEN
`
`3992
`
`
`
`Order Granting / Denying Request For
`Ex Parte Reexamination
`
`
`
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`
`
`
`
`
`
`The request for ex parte reexamination filed 06 March 2012 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`
`Attachments: a)I:] PTO-892,
`b)lZ PTO/SB/08,
`c) Other: Decision on Request
`
`1. IX] The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`_For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`
`
`
`
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TTNO MONTHS from the date of service of any timely filed
`
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`
`
`2. lj The request for ex parte reexamination is DENIED.
`
`
`
`
`
`This decision is not appealable (35 U.S.C. 303(c)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR1.515(c)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1.181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR 1.183.
`
`
`
`In due course, a refund under 37 CFR 1.26 ( c ) will be made to requester:
`
`a) D by Treasury check or,
`
`
`
`c) [:1 by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).
`
`b) C] by credit to Deposit Account No.
`
`, or
`
`
`
`/Andrew L Nalven/
`
`Primary Examiner, An Unit 3992
`
`
`
`
`
`reue 6
`"f hird a
`cc'eues e
`
`
`
`U.S. Patent and Trademark Office
`PTOL-471 (Rev. 08-06)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20120326
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`Petitioners Ex. 1020 Page 3
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`Petitioners Ex. 1020 Page 3
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`

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`Application/Control Number: 90/012,179
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`Page 2
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`Art Unit: 3992
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`DECISION GRANTING EX PARTE REEXAMINATION
`
`A substantial new question of patentability affecting claims 1-11 and 17-20 of United
`
`States Patent Number 5,490,216 (hereafter “the ‘2 16 patent”) is raised by the request for ex parte
`
`reexamination submitted on March 6, 2012.
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination
`
`proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extensions of time in
`
`ex parte reexamination proceedings are provided for in 37 CFR l.550(c).
`
`Notification of Concurrent Proceedings
`
`The patent owner is reminded of the continuing responsibility under 37 CFR 1.985 to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving the
`
`'216 patent throughout the course of this reexamination proceeding. The third party requester is
`
`also reminded of the ability to similarly apprise the Office of any such activity or proceeding
`
`throughout the course of this reexamination proceeding. See MPEP § 2686 and 2686.04.
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`PROSECUTION AND REEXAMINATION HISTORY HISTORY
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`Petitioners Ex. 1020 Page 4
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`Petitioners Ex. 1020 Page 4
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`

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`Application/Control Number: 90/012,179
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`Page 3
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`Art Unit: 3992 .
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`The ‘216 patent was issued on February 6, 1996 from an application filed September 21,
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`1993. The prosecution of the ‘216 patent began with a non-final rejection mailed on 24 June
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`1994 that rejected claims 1-30. The Applicant responded to the non-final rejection by canceling
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`claims 22-24 and 27-29. A second non-final rejection was then mailed on 30 March 1995 that
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`rejected claims 1-21, 25, 26, and 30 under 35 U.S.C.
`
`The Applicant responded to the second non-final office action on 5 July 1995 and
`
`canceled claims 1-21, 25, 26, and 30 and added claims 31-50. The Applicant argued that the
`
`cited prior art did not teach:
`
`“(a) The ‘Licensee Unique ID’ on which the registration system relies for
`matching for verification purposes is generated locally, and
`(b) The algorithm used to generate locally the ‘Licensee Unique ID’ is replicated
`remotely for the purposes of remote generation of a separate ‘Licensee Unique
`ID’ for matching purposes.”
`and
`
`.
`
`“(l) A direct comparison for matching purposes of the licensee unique ID data at
`the local location, and
`(2) A confirmation that the user details provided to the remote location match
`identically with the user details provided to the software to be protected and from
`which the unique ID is generated.”
`
`A Notice of Allowance was then mailed on 8 August 1995 without further comment.
`
`The '2l6 patent was subject to a first ex parte reexamination, control no. 90/010,831 (“the
`
`‘10831 proceeding). The ‘ 10831 proceeding was filed on January 22, 2010 and sought
`
`reexamination of claims 1-20. Reexamination was granted as to claims 1-20 on April 9, 2010 .
`
`and a first non-final office action was mailed on September 28, 2010 that rejected claims 1-20.
`
`An interview was conducted on November 17, 2010 and a response was submitted on November
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`29, 2010 where the Patent Owner argued that none of the prior art cited by the Request taught the
`
`Petitioners Ex. 1020 Page 5
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`Petitioners Ex. 1020 Page 5
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`

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`Application/Control Number: 90/012,179
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`Page 4
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`Art Unit: 3992
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`claimed features of the licensee unique ID set forth in claim 1 or the corresponding security,
`
`registration, and enabling keys of claims 12 and 17. A second non-final office action was
`
`mailed on January 18, 2011 that also rejected claims 1-20. Patent Owner responded to the
`
`second office action by similarly arguing that the cited prior art failed to teach or suggest the
`
`claimed licensee unique ID or licensee unique ID generating means.
`
`-Following the Patent Owner’s March 28, 2011 response, a Notice of Intent to Issue a
`
`Reexamination Certificate was mailed that confirmed claims 1-20. As reasons for confirmation,
`
`the Examiner stated:
`
`“The Patent Owner has persuasively argued that, based on such decisions
`regarding the ‘216 patent, Hellman cannot be reasonably construed as teaching to
`a local licensee unique ID generating means or a remote licensee unique ID
`generating means.
`The licensee unique ID generated by the means recited in each of the
`claims must be derived from at least piece of information that is specific to the
`user, such as name, billing information, or product information unique to the
`instantiation entered by the user. The information cannot be specific to the
`computer or independently generated by the computer. Hellman's ID has four
`inputs: a computer-specific key (SK), a number of uses requested (N), a random
`number generated by the computer (R), and a hash of a code for the type of
`software package, which is general to all installations of that package (H). Since
`none of these are user-specific, Hellman’s algorithm does not generated the
`claimed licensee unique ID.
`It is also noted that the means itself must be an algorithm that, at least to
`some extent, must comprise a summation. The means provided by Hellman for
`combining the fields is DES, an encryption algorithm that does not involve
`A summation; alternatively, Hellman suggests that digital signatures may be used’
`(see Hellman, column 11, lines 42-47). Hellman further stresses that faster
`cryptographic alternatives could also be used (see column 7, line 67 to column 8,
`line 12). Given that there were a finite number of such algorithms available at the
`time of the Patent Owner's invention, it would have been obvious at that time to
`try any recognized alternative in the implementation of Hellman. As the Federal
`Circuit has pointed out, the MD5 algorithm (described in RFC 1321, attached to
`this action) could be such a means.
`Of the other art of record, the only that suggests that use of user-specific
`information in the computation of fields is Grundy. The Patent Owner has
`persuasively argued that the summation disclosed by Grundy is used in the
`
`_
`
`Petitioners Ex. 1020 Page 6
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`Petitioners Ex. 1020 Page 6
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`

`
`Application/Control Number: 90/012,179
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`.
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`Page 5
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`Art Unit: 3992
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`context of merely 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, one skilled in the art therefore would not use the algorithm
`of Grundy as part of the generation of the claimed licensee unique ID.” see NIRC
`mailed August 5, 201] at 5-6.
`
`Hence, claims 1-20 of the '2l6 patent were confirmed in the '10831 proceeding because
`
`theycited prior art failed to teach or suggest the claimed licensee unique ID generated by the
`
`recited means where the licensee unique ID is derived from at least a piece of information that is
`
`specific to the user, such as name, billing information, or product information unique to the
`
`instantiation entered by the user and is not merely specific to the computer or independently
`
`generated by the computer. This interpretation is supported by the Federal Circuit which found
`
`that the term license unique ID is a “unique identifier associated with a licensee that can be, but
`
`is not limited to, personally identifiable information about the licensee or user” but "carmot be
`
`based solely on platform-related user information." Uniloc v Microsoft, 290 Fed. Appx 337, 343-
`
`4.
`
`PROPOSED SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Third Party Requester (“Requester”) requested reexamination of claims 1-11 and 17-20
`
`of the '2l6 patent based upon the following prior art patents and publications:
`
`1.
`
`U.S. Patent No. 4,599,489 to Cargile, issued July 8, 1986, entitled "Solid State
`
`Key for Controlling Access to Computer Software" (hereinafter "Cargile").
`
`2.
`
`WO 92/09160 to Waite et al., published 29 May 1992, entitled "A Secure System
`
`for Activating Personal Computer Software at Remote Locations" (hereinafter "Waite").
`
`Petitioners Ex. 1020 Page 7
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`Petitioners Ex. 1020 Page 7
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`

`
`Application/Control Number: 90/012,179
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`Page 6
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`Art Unit: 3992
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`3.
`
`U.S. Patent No. 4,779,224 to Moseley et a1., issued October 18, 1988, entitled
`
`"Identify Verification Method and Apparatus" (hereinafter "Moseley").
`
`4.
`
`Held, "Understanding Data Communications, Third Edition," © 1988 & 1991 by
`
`SAMS, Third Edition, Second Printing - 1992, pgs. 220-221 (hereinafter "He1d").
`
`Requestor has alleged a substantial new question of patentability in light of the proposed
`
`. rejections:
`
`Issue 1 - Claims 1, 2, 10, 11, 19, and 20 are alleged as anticipated by Cargile under 35
`
`U.S.C. §l02(b).
`
`Issue 2 - Claims 1, 2, 10, 11, 19, and 20 are allegedas obvious over Cargile under 35
`
`U.S.C. §103(a).
`
`Issue 3 - Claims 1-11, 19, and 20 are alleged as rendered obvious by the combination of
`
`Cargile in view of Waite under 35 U.S.C. 103(a).
`
`Issue 4 - Claims 17 and 18 are alleged as rendered obvious by the combination of Cargile
`
`in view of Waite under 35 U.S.C. 103(a).
`
`Issue 5 - Claims 19 and 20 are alleged as anticipated by Waite under 35 U.S.C. §l02(b).
`
`Issue 6 — Claims 19 and 20 are alleged as rendered obvious by the combination of Waite
`
`in view of Held under 35 U.S.C. 103(a).
`
`Issue 7 - Claims 1-11 are alleged as obvious over Waite under 35 U.S.C. §103(a).
`
`Issue 8 - Claims 1-11 are alleged as rendered obvious by the combination of Waite in
`
`view of Held under 35 U.S.C. 103(a).
`
`Petitioners Ex. 1020 Page 8
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`Petitioners Ex. 1020 Page 8
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`

`
`Application/Control Number: 90/012,179
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`Page 7
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`Art Unit: 3992
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`Issue 9 - Claims 1, 2, 10, 11, 19, and 20 are alleged as anticipated by Moseley under 35
`
`U.S.C. §102(b).
`
`Issue 10 — Claims 1, 2, 10, 11, 19, and 20 are alleged as rendered obvious by the
`
`combination of Moseley in view of Cargile under 35 U.S.C. 103(a).
`
`ANALYSIS OF SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`Summary
`
`Requestor has shown a substantial new question of patentability with regards to claims 1-
`
`11 and 17-20 as set forth in Issues 1-8 and 10.
`
`Analysis
`
`A substantial new question of patentability is raised by a cited patent or printed
`
`publication when there is a substantial likelihood that a reasonable examiner would consider the
`
`prior art patent or printed publication important in deciding whether or not the claim is
`
`patentable. A substantial new question of patentability is not raised by prior art presented in a
`
`reexamination request if the Office has previously considered (in an earlier examination of the
`
`patent) the same question of patentability as to a patent claim favorable to the patent owner based
`
`on the same prior art patents or printed publications. In re Recreative Technologies, 83 F.3d
`
`1394, 38 USPQ2d 1776 (Fed. Cir. 1996).
`
`Petitioners Ex. 1020 Page 9
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`Petitioners Ex. 1020 Page 9
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`

`
`Application/Control Number: 90/012,179
`
`Page 8
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`Art Unit: 3992
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`The instant request for reexamination is the second request for reexamination on the ‘216 patent.
`
`Accordingly, MPEP provisions on second or subsequent requests for ex parte reexamination
`
`apply. MPEP § 2240 states:
`
`“If a second or subsequent request for ex parte reexamination is filed (by any party) while
`
`' a first ex parte reexamination is pending, the presence of a substantial new question of
`
`patentability depends on the prior art (patents and printed publications) cited by the
`
`second or subsequent requester. If the requester includes in the second or subsequent
`
`request prior art which raised a substantial new question in the pending reexamination,
`
`reexamination should be ordered only if the prior art cited raises a substantial new
`
`question of patentability which is different from that raised in the pending reexamination
`
`proceeding. If the prior art cited raises the same substantial new question of patentability
`
`as that raised in the pending reexamination proceedings, the second or subsequent request
`
`should be denied.”
`
`Cargile.
`
`Cargile raises a substantial new question of patentability regarding claims 1-11 and 17-20
`
`as presented in Issues 1-4 and 10. Cargile raises a substantial new question by providing new
`
`and non-cumulative teachings that a reasonable examiner would consider important in
`
`determining patentability of the claims.
`
`Cargile raises a substantial new question of patentability because its disclosure is relevant
`
`to the features that distinguished the ‘216 patent over the prior art during prosecution and the
`
`Petitioners Ex. 1020 Page 10
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`Petitioners Ex. 1020 Page 10
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`

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`Application/Control Number: 90/012,179
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`Page 9
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`Art Unit: 3992
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`‘ 10831 proceeding. For example, Cargile discloses a solid state key that controls access to
`
`computer software by executing an algorithm to generate a password that a user enters into a
`
`program in order to gain access (Cargile, Abstract). The program executes an identical
`
`algorithm in order to produce a second password (Id.). The passwords are then compared and if
`
`they are identical, access is granted to use the program (Id). Cargile's solid state key is loaded
`
`with a code or bit pattern "that is unique to each user" (Cargile, column 3 lines 63-65; column 2
`
`lines 16-19). Hence, Cargile's disclosure suggests that a licensee unique ID is generated where
`
`the licensee unique ID is derived from at least a piece of information that is specific to the user
`
`such product information unique to the instantiation entered by the user and is not merely
`
`specific to the computer or independently generated by the computer. Accordingly, a reasonable
`
`examiner would consider Cargile’s disclosure important in determining patentability of the
`
`claims.
`
`Further, Cargile’s teachings are new and non-cumulative with respect to the prior art
`
`considered in prosecution and the ‘10831 proceeding. Cargile’s teachings differ from the
`
`Hellman and Grundy references considered in the ‘ 10831 proceeding because Cargile teaches a
`
`unique value specific to the user used to generate a unique identifier for use in verification in
`
`contrast to Hellman’s unique values that are not specific to the user and Grundy’s user-specific
`
`unique values that are not used to generate a unique identifier for use in verification. Further,
`
`Cargile is new and non-cumulative with respect to the prior art considered in the prosecution of
`
`the ‘2 1 9 patent. Cargile differs from the Chou reference considered in the prosecution in that
`
`Chou only teaches the generation of a local license unique ID and does not teach the generate of
`t.
`
`a second license unique ID as Cargile does through its solid state key.
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`Petitioners Ex. 1020 Page 11
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`Petitioners Ex. 1020 Page 11
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`

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`Application/Control Number: 90/012,179
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`Page 10
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`Art Unit: 3992
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`These teachings would be important to a reasonable examiner in deciding patentability
`
`because the prosecution history suggests that these features were the reason for allowance of the
`
`claims. Further, Cargile's teachings are new and non-cumulative with respect to the prior art of
`
`both the prosecution and prior reexaminations. Thus, there is a substantial likelihood that a
`
`reasonable examiner would consider Cargile important in deciding whether or not the claims are
`
`patentable. Accordingly, Cargile raises a substantial new question of patentability as to claims 1-
`
`11 and 17-20 that has not been decided in a previous examination.
`
`Waite.
`
`Waite raises a substantial new question of patentability regarding claims 1-11 and 17-20
`
`as presented in Issues 3-8. Waite raises a substantial new question by providing new and non-
`
`cumulative teachings that a reasonable examiner would consider important in determining
`
`patentability of the claims.
`
`Waite raises a substantial new question of patentability because its disclosure is relevant
`
`to the features that distinguished the '2l6 patent over the prior art during prosecution and the
`
`‘ 10831 proceeding. For example, Waite discloses a method of permitting personal computer
`
`software programs to be distributed in a licensed controlled manner (Waite, Page 3). Waite
`
`controls the use of software by generating a unique CRC value at a remote registration computer,
`
`sending that CRC value to the local computer, generating a local version of the CRC value, and
`
`comparing the locally and remotely generated CRC values in order to authorize the use of the
`
`program (Waite, page 10 lines 18-26). Waite's CRC value is generating using license data that is
`
`Petitioners Ex. 1020 Page 12
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`Petitioners Ex. 1020 Page 12
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`

`
`Application/Control Number: 90/012,179
`
`Page 11
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`Art Unit: 3992
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`derived from at least a piece of information that is specific to the user such as the user’s
`telephone number (VI/aite, page 11 lines 22-29 andpage 10 lines 18-26). Hence, Waite's
`
`disclosure suggests that a licensee unique ID is generated where the licensee unique ID is
`
`derived from at least a piece of information that is specific to the user and is not merely specific
`
`to the computer or independently generated by the computer. Accordingly, a reasonable
`
`examiner would consider Waite’s disclosure important in determining patentability of the claims.
`
`Further, Waite’s teachings are new and non—cumulative with respect to the prior art
`
`considered in prosecution and the ‘ 10831 proceeding. Waite’s teachings differ from the Hellman
`
`and Grundy references considered in the ‘10831 proceeding because Waite teaches a unique
`
`value specific to the user used to generate a unique identifier for use in verification in contrast to
`
`Hellman’s unique values that are not specific to the user and Grundy’s user-specific unique
`
`values that are not used to generate a unique identifier for use in verification. Further, Waite is
`
`new and non—cumulative with respect to the prior art considered in the prosecution of the ‘219
`
`patent. Waite differs from the Chou reference considered in the prosecution in that Chou only
`
`teaches the generation of a local license unique ID and does not teach the generate of a second
`
`license unique ID as Waite does through its solid state key.
`
`These teachings would be important to a reasonable examiner in deciding patentability
`
`because the prosecution history suggests that these features were the reason for allowance of the
`
`claims. Further, Waite's teachings are new and non-cumulative with respect to the prior art of
`
`both the prosecution and prior reexaminations. Thus, there is a substantial likelihood that a
`
`reasonable examiner would consider Waite important in deciding whether or not the claims are
`
`Petitioners Ex. 1020 Page 13
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`Petitioners Ex. 1020 Page 13
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`

`
`Application/Control Number: 90/012,179
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`Page 12
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`Art Unit: 3992
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`patentable. Accordingly, Waite raises a substantial new question of patentability as to claims 1-
`
`11 and 17-20 that has not been decided in a previous examination.
`
`Moseley
`
`Moseley fails to raise a substantial new question of patentability regarding claims 1-11
`
`and 17-20 because Moseley does not provide any new and non-cumulative teachings that a
`
`reasonable examiner would consider important in determining patentability of the claims.
`
`Moseley discloses a method for verifying the identity of an authorized remote user
`
`terminal for access to a base computer (Moseley, Abstract). Moseley’s authorizing system is
`
`organized as set forth in Figure 1.
`
`/O
`
`r- I .
`Ivék '
`
`/2
`
`I 4
`
`20
`
`la
`
`1 5
`
`—: —
`
`) ' fiIflIiy :
`Im /
`
`COMH/TEA’
`
`5|»
`
`M005’M
`
`’E_r
`
`5'?
`
`D/AL -UP
`M005“!
`
`FIG. 1 of Moseley
`
`9
`
`,. . ’
`
`, ./
`I ‘\(\>/&//
`U567?
`75PM’M4L
`
`When the user terminal 16 wishes to connect to computer 10, the user terminal sends a
`
`password to base verifying unit 12 (Moseley, column 5 lines 50-60). Base Verifying unit 12
`
`checks the password and if it is valid, generates a random value X and sends the random value X
`
`Petitioners Ex. 1020 Page 14
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`Petitioners Ex. 1020 Page 14
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`

`
`Application/Control Number: 90/012,1-79
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`Page 13
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`Art Unit: 3992
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`to remote verifying unit 18. Remote verifying unit 18 and base verifying unit 12 are both
`
`programmed with a system identification value K (Moseley, column 5 lines 33-36). Both the
`
`remote verifying unit 18 and base verifying unit 12 perform the function f(K,X) to generate a
`
`value Y (Moseley, column 6 lines 23-45). The remote verifying unit 18 then returns the
`
`generated value of Y to the base verifying unit 12 (Moseley, column 6 lines 23-45). If the Y
`
`value generated by the remote verifying unit 18 matches the Y value generated by the base
`
`verifying unit 12 then the user terminal is granted access (Moseley, column 6 lines 23-45).
`
`Hence, Moseley discloses the generation of a local and a remote unique value for use in
`
`authorizing a connection.
`
`However, Moseley does not disclose a local license unique ID and a remote license
`
`unique ID as claimed. In the ‘10831 proceeding, claims 1-20 of the '216 patent were confirmed
`
`because the cited prior art failed to teach or suggest the claimed licensee unique ID generated by
`
`the recitedmeans where the licensee unique ID is derived from at least a piece of infonnation
`
`that is specific to the user, such as name, billing information, or product information unique to
`
`the instantiation entered by the user and is not merely specific to the computer or independently
`
`generated by the computer. As noted by the Federal Circuit, the term license unique ID is a
`
`“unique identifier associated with a licensee that can be, but is not limited to, personally
`
`identifiable information about the licensee or user” but "cannot be based solely on platfonn-
`
`related user information." Uniloc v Microsoft, 290 Fed. Appx 33 7, 343-4. Moseley’s unique ID,
`
`‘Y’, is not derived from at least a piece of information that is specific to the user, such as name,
`
`billing information, or product information unique to the instantiation entered by the user.
`
`Instead, the value ‘Y’ is specific to the remote verifying unit 18 such that the value Y is based
`
`Petitioners Ex. 1020 Page 15
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`Petitioners Ex. 1020 Page 15
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`

`
`Application/Control Number: 90/012,179
`
`Page 14
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`Art Unit: 3992
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`solely on platforrn-related user information.
`
`In fact, Moseley even suggests that any remote
`
`verifying unit that is used in conjunction with the base verifying unit would be programmed with
`
`the same K value (Moseley, column 5 lines 35-40).
`
`Accordingly, Moseley fails to teach the claimed licensee unique ID generated by the
`
`recited means where the licensee unique ID is derived from at least a piece of information that is
`
`specific to the user, such as name, billing information, or product information unique to the
`
`instantiation entered by the user and thus does not raise a substantial new question of
`
`patentability as to claims 1-11 and 17-20.
`
`Held
`
`The Request does not rely upon the Held reference to raise a SNQ by teaching the
`
`distinguishing features of the ‘216 patent. However, as noted above, Waite independently raises
`
`an SNQ over claims 1-11 and 17-20. Accordingly, Issues 6 and 8, in which Held is applied, raise
`
`a SNQ.
`
`Petitioners Ex. 1020 Page 16
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`Petitioners Ex. 1020 Page 16
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`

`
`Application/Control Number: 90/012,179
`
`-
`
`Page 15
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`Art Unit: 3992
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`CORRESPONDENCE
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By EFS: Registered users may submit via the electronic filing system EFS-Web, at
`httgs://efs.usgtogov/efiIe/myportal/efs-registered
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`
`Commissioner for Patents
`
`United States Patent & Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571)273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`For EFS-Web transmissions, 37 CFR l.8(a)(1)(i) (C) and (ii) states that correspondence (except
`
`for a request for reexamination and a corrected or replacement request for reexamination) will be
`
`considered timely filed if (a) it is transmitted via the Office's electronic filing system in
`
`accordance with 37 CFR l.6(a)(4), and (b) includes a certificate of transmission for each piece of
`
`correspondence stating the date of transmission, which is prior to the expiration of the set period
`
`of time in the Office action.
`
`Petitioners Ex. 1020 Page 17
`
`Petitioners Ex. 1020 Page 17
`
`

`
`Application/Control Number: 90/012,179
`
`Page 16
`
`Art Unit: 3992
`
`Any inquiry concerning this communication or earlier communications from the Examiner, or as
`
`to the status of this proceeding, should be directed to the Central Reexamination Unit at
`
`telephone number (571) 272-7705.
`
`Signed:
`
`/Andrew Nalvenl
`
`Andrew Nalven
`
`CRU Examiner
`
`GAU 3992
`
`(571)272-3839
`
`Conferee:
`
`U I
`
`Conferee: Um
`
`—
`
`Petitioners Ex. 1020 Page 18
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`Petitioners Ex. 1020 Page 18