IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Reexam of: U.S. Patent 5,490,216 to
`
`Confirmation No.: 5523
`
`RICHARDSON, III
`
`Art Unit: 3992
`
`Reexam Control No.: 90/012,179
`
`Examiner: AHMED, Salman
`
`Filed: March 6, 2012
`
`Atty. Docket: RE—02—SA—216
`
`For: System for Software Registration
`
`Response to Non-Final Office Action Dated September 20, 2012
`
`Mail Stop Ex Parte Reexamination
`Central Reexamination Unit
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Patent Owner hereby replies to the Office Action in the aboVe—captioned ex parte
`
`reexamination dated September 20, 2012. The due date for reply is November 20, 2012.
`
`Petitioners Ex. 1023 Page 1
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`

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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`TABLE OF CONTENTS
`
`LISTING OF CLAIMS ............................................................................................................ .. 4
`
`REMARKS .............................................................................................................................. .. 9
`
`I.
`
`INTRODUCTION ........................................................................................................... .. 9
`
`II. RESPONSE TO THE SNQ DETERMINATION ......................................................... .. 12
`
`A.
`
`The Methodology Used to Determine the SNQ was Legally Unsound ................... .. 12
`
`1.
`
`Legal standard for determining an SNQ ................................................................ ..12
`
`The SNQ Determination Was Not Based On An Analysis Of All Elements of An
`2.
`Independent Claim ......................................................................................................... ..13
`
`B.
`
`C.
`
`The SNQ Determination Was Based On An Erroneous Interpretation of Cargile
`
`14
`
`Cargile And Waite Are Not “New” References ....................................................... .. 15
`
`The Cited Teachings Of Cargile And Waite Are Cumulative Of The Teachings Of
`D.
`Hellman And Grundy ......................................................................................................... .. 16
`
`III.
`
`CLAIM INTERPRETATION .................................................................................... .. 19
`
`A.
`
`Broadest Reasonable Interpretation Consistent with the Specification.................... .. 19
`
`B. Means—Plus—Function Limitations ............................................................................ .. 19
`
`C.
`
`Claim Construction In Prior And Pending Litigations ............................................. ..20
`
`IV.
`
`RESPONSE TO CLAIM REJECTIONS ................................................................... ..21
`
`Cargile Fails To Anticipate The ‘216 Patent Claims Because It Fails to Disclose Or
`A.
`Suggest Each and Every Claimed Element........................................................................ ..21
`
`Cargile Does Not Disclose Nor Suggest Mode Switching Means as Claimed In Each
`B.
`Independent Claim ............................................................................................................. ..22
`
`Cargile Does Not Disclose Nor Suggest A Remote Licensee Unique ID Generating
`C.
`Means As Claimed in Claims 1, 19 and 20 ........................................................................ ..28
`
`D.
`
`Cargile in View of Waite Cannot Render Any Claims Obvious .............................. .. 31
`
`1. Waite Fails to Teach Local and Remote LUID Generating Means That Utilize the
`Same Algorithm ............................................................................................................. ..32
`
`The References Cannot be Combined Because Modifying Cargile In View of Waite
`2.
`Renders Cargile Unsatisfactory For Its Intended Purpose ............................................ ..34
`
`The Combination of Cargile and Waite Has No Reasonable Expectation of Success
`3.
`for Achieving Mode Switching Means .............................................................................. .. 36
`
`V. OBJECTIVE INDICIA OF NON—OBVIOUSNESS ..................................................... ..37
`
`VI.
`
`STATUS OF CONCURRENT LITIGATION .......................................................... .. 38
`
`2
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`— 3 —
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`VII.
`
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW .............................. .. 39
`
`CONCLUSION ...................................................................................................................... ..40
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`LISTING OF CLAIMS
`
`Original claims 1-11 and 17-20 from U.S. Patent No. 5,490,216 to Richardson (“the
`
`‘216 Patent”) are subject to ex parte reexamination. No claims are added, cancelled or
`
`amended. The status of all claims 1-20 is provided below:
`
`1.
`
`(patented) A registration system for licensing execution of digital data in a
`
`use mode, said digital data executable on a platform, said system including local licensee
`
`unique ID generating means and remote licensee unique ID generating means, said system
`
`further including mode switching means operable on said platform which permits use of said
`
`digital data in said use mode on said platform only if a licensee unique ID first generated by
`
`said local
`
`licensee unique ID generating means has matched a licensee unique ID
`
`subsequently generated by said remote licensee unique ID generating means; and wherein
`
`said remote licensee unique ID generating means comprises software executed on a platform
`
`which includes the algorithm utilized by said local licensee unique ID generating means to
`
`produce said licensee unique ID.
`
`2.
`
`(patented) The system of claim 1, wherein said local licensee unique ID
`
`generating means generates said local licensee unique ID by execution of a registration
`
`algorithm which combines information in accordance with said algorithm, said information
`
`uniquely descriptive of an intending licensee of said digital data to be executed in said use
`
`mode.
`
`3.
`
`(patented) The system of claim 2, wherein said mode switching means
`
`permits operation of said digital data in said use mode in subsequent execution of said digital
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`data only if said licensee unique ID generated by said local licensee unique ID generating
`
`means has not changed.
`
`4.
`
`(patented) The system of claim 3, wherein said local licensee unique ID
`
`generating means comprises part of said digital data when executed on said platform.
`
`5.
`
`(patented) The system of claim 4, wherein said mode switching means
`
`comprises part of said digital data when executed on said platform.
`
`6.
`
`(patented) The system of claim 5, wherein the information utilized by said
`
`local licensee unique ID generating means to produce said licensee unique ID comprises
`
`prospective licensee details including at least one of payment details, contact details and
`
`name.
`
`7.
`
`(patented) The system of claim 1, said system further including platform
`
`unique ID generating means, wherein said mode switching means will permit said digital data
`
`to run in said use mode in subsequent execution of said digital data on said platform only if
`
`said platform unique ID has not changed.
`
`8.
`
`(patented) The system of claim 7, wherein said platform unique ID generating
`
`means comprises part of said digital data when executed on said platform.
`
`9.
`
`(patented) The system of claim 8, wherein said platform unique ID generating
`
`means utilizes hard disc or other platform information to determine said platform unique ID.
`
`10.
`
`(patented)
`
`The system of claim 1, wherein said platform comprises a
`
`computer operating system environment.
`
`11.
`
`(patented) The system of claim 10, wherein said digital data comprises a
`
`software program adapted to run under said operating system environment.
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
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`12.
`
`(patented) A registration system attachable to software to be protected, said
`
`registration system generating a security key from information input to said software which
`
`uniquely identifies an intended registered user of said software on a computer on which said
`
`software is to be installed; and wherein said registration system is replicated at a registration
`
`authority and used for the purposes of checking by the registration authority that
`
`the
`
`information unique to the user is correctly entered at the time that the security key is
`
`generated by the registration system.
`
`13.
`
`(patented) The registration system of claim 12, wherein said security key is
`
`generated by a registration number algorithm.
`
`14.
`
`(patented) The registration system of claim 13, wherein said registration
`
`number algorithm combines information entered by a prospective registered user unique to
`
`that user with a serial number generated from information provided by the environment in
`
`which the software to be protected is to run.
`
`15.
`
`(patented) The registration system of claim 12, wherein said registration
`
`system checks at the time of boot of said software as to whether it is a first boot of the
`
`software to be protected or a subsequent boot, and, if a subsequent boot is detected, then
`
`environment and user details are compared to determine whether the program reverts to a
`
`demonstration mode and a new user registration procedure is to commence or a full version
`
`run.
`
`16.
`
`(patented) The registration system of claim 15, wherein said environment
`
`details comprise at least one element which is not user—configurable on the platform.
`
`17.
`
`(patented) A method of control of distribution of software, said method
`
`comprising providing mode—switching means associated with said software adapted to switch
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`said software between a fully enabled mode and a partly enabled or demonstration mode, said
`
`method further comprising providing registration key generating means adapted to generate a
`
`registration key which is a function of information unique to an intending user of the
`
`software; said mode—switching means switching said software into fully enabled mode only if
`
`an enabling key provided to said mode—switching means by said intending user at the time of
`
`registration of said software has matched identically with said registration key; and wherein
`
`said enabling key is communicated to said intending user at the time of registration of said
`
`software; said enabling key generated by a third party means of operation of a duplicate copy
`
`of said registration key generating means.
`
`18.
`
`(patented) The method of claim 17, wherein said registration key is also a
`
`function of the environment in which said software is installed.
`
`19.
`
`(patented) A remote registration station incorporating remote licensee unique
`
`ID generating means, said station forming part of a registration system for licensing
`
`execution of digital data in a use mode, said digital data executable on a platform, said system
`
`including local licensee unique ID generating means, said system further including mode
`
`switching means operable on said platform which permits use of said digital data in said use
`
`mode on said platform only if a licensee unique ID generated by said local licensee unique ID
`
`generating means has matched a licensee unique ID generated by said remote licensee unique
`
`ID generating means; and wherein said remote licensee unique ID generating means
`
`comprises software executed on a platform which includes the algorithm utilized by said
`
`local licensee unique ID generating means to produce said licensee unique ID.
`
`20.
`
`(patented) A method of registration of digital data so as to enable execution of
`
`said digital data in a use mode, said method comprising an intending licensee operating a
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`registration system for licensing execution of digital data in a use mode, said digital data
`
`executable on a platform, said system including local licensee unique ID generating means
`
`and remote licensee unique ID generating means, said system further including mode
`
`switching means operable on said platform which permits use of said digital data in said use
`
`mode on said platform only if a licensee unique ID generated by said local licensee unique ID
`
`generating means has matched a licensee unique ID generated by said remote licensee unique
`
`ID generating means; and wherein said remote licensee unique ID generating means
`
`comprises software executed on a platform which includes the algorithm utilized by said
`
`local licensee unique ID generating means to produce said licensee unique ID.
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`REMARKS
`
`Original claims 1-11 and 17-20 from U.S. Patent No. 5,490,216 to Richardson (“the
`
`‘216 Patent”) are subject to ex parte reexamination. The Reexam Order issued on March 29
`
`and a non-final Office Action was mailed on September 20, 2012 (“Office Action”). The
`
`Office Action confirmed claims 7-9 and rejected claims 1-6, 10-11, and 17-20. Claims 12-16
`
`are not subject to reexamination herein.
`
`Claims 1-2, 10-11 and 19-20 were rejected under 35 USC §102(b) as being
`
`anticipated by U.S. Patent 4,599,489 (“Cargile”).
`
`Claims 3-6 and 17-18 were rejected under 35 USC §103(a) as being obvious over
`
`Cargile in View of WO 92/09160 (“Waite”).
`
`An in-person interview was conducted on November 13, 2012. The substance of the
`
`in-person interview is summarized in section VII below.
`
`The Patent Owner, Uniloc Luxembourg S.A. (formerly Uniloc Singapore Private
`
`Limited) (“Uniloc”) respectfully challenges the SNQ, traverses all rejections, and requests
`
`that all rejections be reconsidered and withdrawn.
`
`1.
`
`INTRODUCTION
`
`The ‘216 Patent discloses technology in the field of software activation. The ‘216
`
`Patent solved a problem that had plagued the software industry for many years, namely, the
`
`loss of substantial revenue due to copyright violations either from unauthorized casual
`
`copying of software among consumers or from outright software piracy.
`
`Inventor Frederic
`
`Richardson, while working in the music recording industry in the early 1990s, experienced
`
`his “eureka” moment when he conceived of an idea for binding a license to use digital data
`
`simultaneously to three data components: user data, software data, and computer hardware
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
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`data. From this inspiration he derived the concept of the “licensee unique ID”. The licensee
`
`unique ID is a mathematical summation of these data components. With this concept,
`
`Richardson was able to invent a complete software registration system that exploits Internet
`
`communications for the convenience of both the consumer and the software vendor.
`
`In one example, the invention works as follows. At the user’s computer, a copy of the
`
`software is loaded in a demonstration (“demo”) mode, in which only limited portions of the
`
`program are allowed to operate thereby allowing the user the “try before you buy” option. If
`
`the user decides to license the software for full—use mode, the user’s computer transmits user
`
`data (e. g., user name, address, billing information) over the telephone or Internet along with
`
`software data and computer hardware data to the vendor’s remote registration server. The
`
`remote registration server generates a remote licensee unique ID (a.k.a. “registration
`
`number”) from this data and transmits the registration number back to the user’s computer.
`
`Using the same algorithm and inputs (i.e., user data, software data, and computer
`
`hardware data) as the remote registration server, the user’s computer independently generates
`
`a local licensee unique ID. The user’s computer then compares the local and remote licensee
`
`unique IDs. If the two IDs match, the software is activated by switching it from demo to full-
`
`use mode.
`
`The system is convenient
`
`for
`
`the user because (i)
`
`it allows
`
`software to be
`
`demonstrated locally before purchase, (ii) it allows a user to legitimately license the software
`
`using any available copy (e. g., CD—ROM) or via downloading, and (iii) the user is not
`
`required to memorize any passwords or utilize a secondary/external hardware device keys
`
`(such as in the Cargile reference asserted in this Reexam) in order to use the software. The
`
`system is convenient for the software vendor because (i) every copy of the software released
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`into commerce can be identical, (ii) activation can be controlled and automated by a central
`
`registration server, and (iii) software piracy is vastly curtailed.
`
`Richardson’s software registration technology, as disclosed in the ‘216 Patent, solved
`
`a long—felt need in the industry, so effectively that
`
`industry giants such as IBM® and
`
`Microsoft® (among many others) have adopted the technology through licensing. During
`
`nine years of litigation against Microsoft®, the ‘216 Patent Owner prevailed on both validity
`
`and infringement. The lower court’s findings of validity and infringement were upheld by
`
`the Federal Circuit Court of Appeals.
`
`While litigation was pending, Microsoft initiated Ex Parte Reexamination proceeding
`
`Control No. 90/010,831 (the “First Reexam”).
`
`In that proceeding, dozens of prior art
`
`references were submitted by the requester and Patent Owner. The closest and most relevant
`
`prior art were identified as U.S. Patent 4,658,093 (“Hellman”) and U.S. Patent 5,291,598
`
`(“Grundy”). After thorough examination spanning two non—final Office Actions, the USPTO
`
`confirmed patentability of all 20 claims of the ‘216 Patent without amendment.
`
`While many other references cited in original prosecution and in the First Reexam
`
`were vetted by Microsoft, Uniloc, the Federal Courts, and the USPTO Examiners, none was
`
`deemed more relevant than Hellman or Grundy. Meanwhile, other enforcement actions
`
`against unauthorized use of the ‘216 Patent are pending litigation. Defendants in those cases
`
`have initiated the present Reexamination request. Unable to re—assert invalidity based on
`
`Hellman or Grundy, the requesters have opted for less—relevant prior art (Cargile and Waite)
`
`in a thinly veiled attempt to stay litigation. Neither Cargile, nor Waite, teaches anything new.
`
`Both Cargile and Waite were cited in prior Information Disclosure Statements. Both
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
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`references have been considered by the Office but were set aside in favor of the more relevant
`
`references.
`
`Notwithstanding the extensive prosecution, reexamination and litigation history of the
`
`‘216 Patent, the requesters are asking the Office to ignore strong validity precedent in favor
`
`of less—relevant teachings already of record.
`
`II.
`
`RESPONSE TO THE SNQ DETERMINATION
`
`Patent Owner respectfully disagrees with the Office’s decision in the March 29
`
`Reexam Order. The methodology used to determine whether a substantial new question
`
`(“SNQ”) of patentability exists was legally unsound and the technical reasoning justifying the
`
`SNQ was erroneous. Moreover, the Cargile and Waite references are not new, and in any
`
`event, their cited teachings are merely cumulative of the teachings of prior art of record.
`
`A.
`
`The Methodology Used to Determine the SNQ was Legally Unsound
`
`1.
`
`Legal standard for determining an SNQ
`
`The legal standard for determining an SNQ under 35 USC §303(a) has been
`
`established by the Federal Circuit as follows:
`
`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
`important
`patentable.
`
`art patent or printed publication
`the prior
`in deciding whether or not
`the claim is
`
`In re Recreative Technologies, 83 F.3d 1394 (Fed. Cir. 1996).
`
`The issue whether or not a claim is patentable in a reexamination proceeding is
`
`limited to questions of prior art, z'.e., anticipation (35 USC §102) and obviousness (35 USC
`
`§103). See 35 USC §302.
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
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`Anticipation under §102 requires that a reference discloses all elements of the claim.
`
`See NetmoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008). Therefore,
`
`a “reasonable examiner” when considering whether a prior art reference raises an SNQ in
`
`view of §102 should consider whether there is a substantial likelihood that the reference
`
`anticipates all elements of the claim at issue.
`
`2.
`
`The SNQ Determination Was Not Based On An Analysis Of All
`Elements of An Independent Claim
`
`Contrary to the “reasonable examiner” standard, the Reexam Order based its finding
`
`not on an analysis of all elements of any claim, but primarily on an allegation that the Cargile
`
`reference anticipates a single element of a claim; namely, the “licensee unique ID” element
`
`(interchangeably “LUID”). See Order, pages 8-9.
`
`As the basis for its analysis, the Order cited to Reasons for Confirmation in the prior
`
`reexamination proceeding 90/010,831. Id. at pages 4-5. The Order then concluded:
`
`[C]laims 1-20 of the ‘216 patent were confirmed in the
`‘10831 proceeding because the 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 a 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.
`
`Id. at page 5.
`
`Having established (erroneously)
`
`that patentability of
`
`the
`
`‘216 Patent
`
`relied
`
`exclusively on the novelty of the LUID, the Order proceeded to justify the SNQ by analyzing
`
`whether Cargile discloses an LUID without also analyzing whether Cargile teaches all other
`
`elements of an independent claim. To wit, the Order states on page 9:
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
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`Cargile ’s solid state key is loaded with a code or bit pattern
`‘that is unique to each user’ (Cargile, column 3 lines 643-
`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.
`
`The Reexam Order fails to provide an analysis of Cargile with respect to other
`
`essential elements of the independent claims. Most notably,
`
`the Reexam Order fails to
`
`consider whether Cargile teaches a “mode switching” means recited in all claims of the ‘216
`
`Patent. The Reexam Order also fails to consider whether Cargile teaches a “remote LUID
`
`generating means” recited in claims 1-11, 19 and 20.
`
`An SNQ based on an alleged §102 reference should not be granted on such
`
`incomplete analysis. The Patent Owner respectfully submits that the SNQ finding should be
`
`reconsidered and reversed.
`
`B.
`
`The SNQ Determination Was Based On An Erroneous Interpretation of
`Cargile
`
`The SNQ determination was based on whether Cargile teaches a “licensee unique ID”
`
`as recited in claims of the ‘216 Patent. The Reexam Order correctly quoted the Reasons for
`
`Confirmation in the First Reexam, observing that “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”. Reexam Order, page 5.
`
`The Reexam Order then errs by assuming that Cargile’s unique bit pattern, which is
`
`loaded into Cargile’s key device, meets the quoted definition of “licensee unique ID” solely
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
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`because Cargile characterizes the bit pattern as being “unique to each user”. The Reexam
`
`Order fails to consider whether Cargile’s bit pattern satisfies the requirements for a licensee
`
`unique ID as set forth in the Reasons for Confirmation to which the Order cites.
`
`In fact, the bit pattern doesn’t meet the requirements for a licensee unique ID as set
`
`forth in the Reasons for Confirmation. Cargile teaches that the bit pattern is set in the key
`
`device during manufacture, and may be a 32-bit code. Cargile at Col. 2, Lines 16-23 and Col.
`
`3, Lines 64-66.
`
`In that respect, the bit pattern is akin to a serial number, and one such serial
`
`number is coded into each manufactured key device. Cargile’s serial number is unique only
`
`to the device not to the user. Put differently, different users can utilize the same key device
`
`to access the same machine, further evidencing non—uniqueness of Cargile’s design.
`
`Moreover, the bit pattern being merely specific to the device is, according to the
`
`Reasons for Confirmation, a disqualifying characteristic for a “licensee unique ID”. The bit
`
`pattern loaded into the key device contains no user—specific information, nor product
`
`information unique to an instantiation entered by the user.
`
`Instantiation of the bit pattern
`
`occurs in Cargile, if at all, during manufacturing of the key device and absent any user data.
`
`In view of the foregoing,
`
`the SNQ determination is in error and provides no
`
`justification for reopening examination of the ‘216 Patent. For at least this additional reason,
`
`the Patent Owner respectfully submits that the SNQ finding should be reconsidered and
`
`reversed.
`
`C.
`
`Cargile And Waite Are Not “New” References
`
`Cargile and Waite are not new references because each was cited previously during
`
`prosecution or reexamination of the ‘216 Patent.
`
`15
`
`Petitioners Ex. 1023 Page 15
`
`Petitioners Ex. 1023 Page 15
`
`

`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
`
`Cargile (4,599,489)
`
`is
`
`the parent case of a divisional application to Cargile
`
`(4,609,777). The Cargile divisional application was cited on 8/31/2010 by the Patent Owner
`
`in a Second Supplementary IDS, Sheet 2 of 5, in Reexamination Control No. 90/010,831.
`
`The reference was considered by Examiner Heneghan on 9/21/2010. Because Cargile ‘777
`
`is a divisional of Cargile ‘489, the two disclosures share a common specification; therefore
`
`the teachings of Cargile ‘489 were, in fact, previously considered.
`
`Waite (WO 92/09160) was cited by the applicant in an IDS submitted to the USPTO
`
`on 2/23/1994 during original prosecution of the ‘216 Patent. The Waite reference was
`
`considered by Examiner Cain on June 24, 1994.
`
`In fact, Waite is cited in the Background
`
`Section of the ‘216 Patent and five paragraphs are devoted to analyzing Waite and discussing
`
`its deficiencies, all of which are overcome by the ‘216 Patent.
`
`Although 35 USC § 303 provides that the existence of an SNQ is not precluded by the
`
`fact that a reference was previously cited to or considered by the Patent Office, nevertheless,
`
`the record demonstrates that the third party requester is not introducing any new references.
`
`Patent Owner asks that this fact be weighed accordingly against statements made in the Order
`
`Granting Reexamination that Cargile and Waite provide “new” teachings. Reexam Order,
`
`pages 9 and 11.
`
`D.
`
`The Cited Teachings Of Cargile And Waite Are Cumulative Of The
`Teachings Of Hellman And Grundy
`
`Contrary to statements made in the Order, each of the cited teachings of Cargile and
`
`Waite cited in the Order are either irrelevant to the claims of the ‘216 Patent or can be found
`
`in the more relevant references of Hellman and Grundy. Table 1 below summarizes this
`
`argument.
`
`16
`
`Petitioners Ex. 1023 Page 16
`
`Petitioners Ex. 1023 Page 16
`
`

`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
`
`TABLE 1. CUMULATIVE TEACHINGS
`
`CITATION IN THE ORDER EQUIVALENT TEACHING ALREADY OF RECORD
`GRANTING REEXAM
`
`CARGILE
`
`HELLMAN and GR UNDY
`
`“Cargile discloses a solid state
`EICCGSS
`t0
`
`key that controls
`
`0 The “solid state key” is irrelevant, as the ‘216 claims
`
`recite a remote registration server.
`
`computer software by executing
`
`0 “Controlling access to computer software” is cumulative.
`
`an algorithm to generate
`
`a
`
`See Hellman at Abstract; Grundy at Abstract.
`
`password that a user enters into
`
`0 “Executing an algorithm to generate a password that a
`
`a program in order
`
`to gain
`
`user enters into a program in order to gain access” is
`
`access
`
`(Cargile, Abstract)”
`
`cumulative. See Hellman at 4:46-64 (generating a check
`
`Order p. 9.
`
`value for comparison to an authenticator in order to gain
`
`access to software); Grundy at 5:3-20 (generating an
`
`authorization code to be entered by the user to gain access
`
`to software).
`
`“The
`
`program executes
`
`an
`
`This teaching is cumulative.
`
`See Hellman at 10:27-32
`
`identical algorithm in order to
`
`(cryptographic function generator 38 of the client computer
`
`produce a
`
`second password.
`
`is functionally identical to cryptographic function generator
`
`The
`
`passwords
`
`are
`
`then
`
`23 of the authorization server); Generator 23 outputs a
`
`compared
`
`and
`
`if
`
`they
`
`are
`
`value A; generator 38 outputs a check value C; Signals C
`
`identical, access is granted to
`
`and A are compared and if they match, access to software
`
`use
`
`the
`
`program
`
`(Cargile,
`
`is authorized. Hellman at 10:18-26; FIGS. 2 & 7.
`
`Abstract)” Order p. 9.
`
`solid state key is
`“Cargile’s
`loaded with a
`code or bit
`
`pattern ‘that is unique to each
`
`user’ Cargile, column 3 lines
`63-65; column 2 lines 16-19.”
`
`This teaching is cumulative. As discussed above in III.B,
`
`Cargile’s bit pattern is essentially a serial number for the
`
`key device. An equivalent teaching is found in Hellman ’s
`SERIAL NUMBER for base unit 12. See Hellman at 5:57-
`
`65 (Base unit 12 sends a request signal to the authorization
`
`Order, p. 9.
`
`server for access to software. The signal includes SERIAL
`
`NUMBER, which
`
`is
`
`unique
`
`to
`
`base
`
`unit
`
`12).
`
`See also Grundy at FIG. 4 step 406; 17:9-23; FIG. 5, step
`
`506 and 18:10-67, which teaches generating a registration
`
`code that includes a hardware ID, which can be a unique
`machine number.
`
`WAITE
`
`HELLMAN and GRUNDY
`
`“Waite discloses a method of
`
`This teaching is cumulative.
`
`permitting personal computer
`software
`be
`See Hellman at Title, Abstract and 5:38-56.
`programs
`to
`
`17
`
`Petitioners Ex. 1023 Page 17
`
`Petitioners Ex. 1023 Page 17
`
`

`
`distributed
`
`in
`
`a
`
`licensed
`
`controlled manner (Waite, Page
`
`See also Grundy at Abstract and 4:21-26.
`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/012,179
`
`3).” Order, p. 10.
`Waite
`controls
`
`the
`
`use of
`
`software by generating a unique
`CRC
`value
`at
`a
`remote
`
`registration computer, sending
`that CRC value to the local
`
`This teaching is cumulative. Waite uses a conventional
`
`CRC check to ensure that a tamperproof overlay file (user
`
`data merged with critical files) transmitted between server
`
`and user was not altered or corrupted prior to authorizing
`
`software installation at the user’s computer. See Grundy at
`
`FIG. 3, steps 301-315 and 14:30 to 15:45. Grundy also
`
`uses conventional CRCs (a.k.a. “checksums”) to verify that
`
`the data components of the unique registration code (user
`
`computer, generating a local
`version of the CRC value, and
`and
`
`the
`
`locally
`
`comparing
`
`remotely generated CRC values
`in order to authorize the use of
`
`data, hardware ID, anti—virus checksum, etc.) generated at
`
`the user’s computer match their counterparts generated at
`
`the program (Waite, page 10
`
`the registration server.
`
`In particular,
`
`if the checksums
`
`lines 18-26).” Order, p. 10
`
`don’t match because the software was corrupted,
`
`the
`
`“Waite’s
`
`CRC
`
`value
`
`registration attempt is terminated. Grundy at 15:34-40.
`is This teaching is cumulative. Grundy also generates CRC
`
`generated using license data
`that is derived from a