Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 1 of 42 PageID #: 337
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`"
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`UNITED STATES DISTRICT COURT
`DISTRICT OF RHODE ISLAND
`
`Civ. A. No. 03-CV-440 (WES)
`
`UNILOC USA, INC., and
`
`UNILOC SINGAPORE PRIVATE LlMITED,
`
`Plaintiffs,
`
`vs.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`PLAINTIFFS' REPLY CLAIM CONSTRUCTION BRIEF
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`: . ..: ~,
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`f'\
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`Petitioner Ex. 1035 Page 1
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`

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`;
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 2 of 42 PageID #: 338
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`TABLE OF CONTENTS
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`TABLE Of' AUTHORITIES
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`~..~
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`..
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`. I.
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`IN'TRODUCTION
`
`~
`
`~
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`(1) Information Sent ToSoftware Manufacturer is Encrypted ..~
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`. (2) Storing and Comparing Software Copy Number
`
`(3) Validating User Number and Authorizing User
`
`II.
`
`DISCUSSION
`
`(A) Group 1- Licensee Unique ID and Its Generation
`
`1. "Licensee Unique ID;" "Registration Key;"
`"Enabling Key;" Security Key"
`~
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`2. Unique
`
`3. Licensee Unique ID Cannot Be Based on
`Software Vendor Information
`
`4. Licensee Unique IDBased On User Information,
`Not Computer Information
`
`_
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`,
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`5. Associated With
`
`~
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`6.
`
`Information Uniquely Descriptive of an
`Intending Licensee Information .•. Which
`Uniquely Identifies an Intended Registered User
`
`7. Local Licensee Unique In Generating Means;
`Remote Licensee Unique ID Generating Means;
`and Registration Key Generating Means
`
`~
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`8. Algorithm; Includes the Algorithm Utilized by
`Said Local Licensee Unique ID Generating
`Means to Produce Said Licensee Unique ill; and
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`PAGE
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`iii
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`1
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`:3
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`5
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`~~!*•••••. . . . ...7
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`8
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`13
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`18
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`19
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`20
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`Petitioner Ex. 1035 Page 2
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 3 of 42 PageID #: 339
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`;
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`~
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`..
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`12
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`22
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`25
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`26
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`28
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`29
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`30
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`30
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`.31
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`32
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`32
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`33
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`34·
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`Generated by a Third Party Means of Operation
`.of Said Registration Key Generating Means
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`y
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`I \
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`.
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`9. Unique
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`,
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`(B) Group 2 - Mode/Mode Switching Means
`.
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`(C) Partly Enabled or Demonstration Mode Fully Enabled
`ModelFull Version
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`.
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`'
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`(D) Mode Switching Means
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`1. Matching Requirement .,
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`·
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`2. Mode Switching Means in Subsequent
`Execution
`~
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`3. Registration System
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`4. Group 3 - User Interaction Requirements
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`.
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`\
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`i
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`5. Group 4 - Claim 12 and Its Dependent
`Claims
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`(A) Checking By the Registration Authority
`that the Information Unique to the User
`is Correctly Entered
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`6. Wherein Said Registration System is
`Replicated at the Registration Authority
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`7. Serial Number
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`,
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`~
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`~
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`(E) Group 5 - Platform Unique ill Generating Means
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`;
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`35
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`11
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`Petitioner Ex. 1035 Page 3
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 4 of 42 PageID #: 340
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`TABLE OF AUTHORITIES
`
`(\
`
`FEDERAL CASES
`
`Atmel Corp. v. Info. Storage Devices, Inc.,
`198 F.3d 1374 (Fed. Cir. 1999)
`
`CJ Sulzer Textil A G v, Picanol NV,
`358 F.3d 1356 (Fed. Cir. 2004)
`
`CJ Vitronics Corp. v. Conceptronics, Inc.,
`90 F.3rd 1576 (Fed Cir. 1996)
`
`Comark Communications, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998)
`
`:
`
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003)
`
`Eagle Comtronics, Inc. v. Arrow Comm. Labs., Inc.,
`305 F.3d 1303 (Fed. Cir. 2002)
`
`PAGE
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`·
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`37
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`;
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`~ 6, 18, 19,26
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`·
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`.
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`2,35
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`~ .15, 25, 31
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`;
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`9,14,29,31
`
`'..
`
`)
`
`Glaxo Group Ltd. v. Apotex, Inc.,
`376 F.3d 1339 (Fed. Cir. 2004)
`
`Interactive'Gift Express, Inc. v. Compuserve Inc.,
`256 F,3d 1323 (Fed. Cir. 2001)
`
`Intertrust Techs. Corp. v. Microsoft Corp.,
`275 F. Supp.2d 1031 (N.D. Cal. 2003)
`
`Omega Eng'g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)
`
`~
`
`Phillips v. A WH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)
`
`Resonate, Inc. v. Alteon Websystems, Inc.,
`338 F.3d 1360 (Fed. cu. 2003)
`
`SRlInt'l v. Matsushita Elec. Corp.,
`775 F.2d 1107 (Fed. Cir. 1985)
`
`(
`
`SciMed Life Sys., Inc. v, Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir.2001)
`
`iii
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`9
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`5
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`3, 8,28
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`6, 7, 15, 19, 20,28
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`14
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`6
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`26
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`2, 14
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`6
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`Petitioner Ex. 1035 Page 4
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 5 of 42 PageID #: 341
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`Smithkline Beecham Corp. v. Apotex Corp.,
`403 F.3d 1331 (Fed. Cir. 2005)
`
`Sorenson v. U.S. Intern. Trade Com'n,
`427 F.3d 1375 (Fed~ Cir. 2005)
`
`Structural Rubber Prods. Co. v. Park Rubber Co.,
`749 F.2d 707 (Fed. CiT 1984)
`
`N~~M~~~~~,
`Civil Action No. H-03-1667
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`DOCKETED CASES .
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`FEDERAL STATUTES
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`PAGE
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`32
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`9, 13,23
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`.:
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`18
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`·
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`:
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`8
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`35 U.S.C. § 112, ~ 6
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`28,30,35
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`iv
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`Petitioner Ex. 1035 Page 5
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 6 of 42 PageID #: 342
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Singapore Private Limited (together "Uniloc"),
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`respectfully submit this reply claim construction brief for consideration by theCourt in
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`construing the disputed terms contained in the asserted claims ofD.S. Patent No. 5,490,216 ("the '
`. . .
`.
`'.
`'216 patent"). Ex. A (submitted with Uniloc's Opening Claim Construction Brief),
`
`I.
`
`INTRODUCTION
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`Two of the persistent themes found throughout Microsoft's Claim Construction Brief are:
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`(1) that the '216 patent does not cover the concept of "machine locking" to prevent software
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`piracy, and (2) the asserted claims of the '216 patent must all be construed to require that the
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`user provide ''personal information" during the registration process. Microsoft's arguments are
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`directly contrary to the '216 patent specification and claim language. The '216 patent
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`specification clearly discloses machine locking in, inter alia, the Summary of the Invention:
`
`In particular forms, the system includes means for detecting when parts of the
`platform on which the digital data has been loaded has changed in part or in
`entirety as compared with the platform parameters when the software or digital
`data to be protected was for example last booted or run or validly registered.
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`,;,
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`Ex. A, col. 2, lines 55-60.
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`This describes machine locking.
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`The plain language of the claims undermines Microsoft's second argument that the
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`claims must be construed to require personal information. For example, neither asserted claims 1
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`or 12 nor asserted claim 16 say anything about a user having to provide personal information,
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`such as name, address, or credit card number. To the contrary, Claim 6, which is not asserted in
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`this case, covers a system that requires providing personal information. Claim 6 reads as
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`follows:
`
`1
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`Petitioner Ex. 1035 Page 6
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 7 of 42 PageID #: 343
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`The system of claim 5, wherein the information utilized by said local licensee
`unique ID generating means to produce said licensee unique In comprises
`prospective licensee details including at least one of payment details, contact
`details and name.
`
`)
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`{\
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`Ex. A, col. 14, lines 21-27.
`
`Microsoft is improperly attempting to have the Court read the personal information requirements
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`of Claim 6 into Claim 1; which has no such language. Microsoft's efforts violate the patent law
`
`doctrine of claim differentiation:
`
`It is settled law that when a patent chum does not contain a certain limitation and
`another claim . does,
`that
`limitation cannot be read into the former claim jn
`determining either validity or infringement.
`
`SRI i«: v, Matsushita EZec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985).
`
`Microsoft's brief is also full ofinconsistencies. For example, Microsoft criticizes Uniloc
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`for submitting the Affidavit ofUniloc's expert, Mr. KJausner. See MS Brief, pp. 8-10. However,
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`when it suits its purpose, Microsoft cites to and relies upon Mr. KJausner's Expert Report. See
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`MS Brief, p. 15. Microsoft complains that the Affidavit of Mr. Klausner is extrinsic evidence.
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`See MS Briefpage 8. Yet, on the very next page Microsoft concedes that Mr. Klausner "does
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`not cite to anything outside of the intrinsic record." See MS Brief, p. 9. (emphasis in original).
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`In addition, Microsoft itself refers to extrinsic evidence, such as a dictionary, in its own brief.
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`See MS Brief, p. 33. Cf. Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1584 (Fed Cir.
`
`1996) (extrinsic evidence includes dictionaries).
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`Another recurring theme in Microsoft's Briefis that the '216 patent is directed to
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`software sold on a "try before you buy" basis. See MS Brief, p. 2. Microsoft's argument is
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`entirely undermined by the language of the '216 patent, including the asserted claims. The term
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`"try before you buy" is not found anywhere in the '216 patent, including the claims.
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`In fact, the
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`asserted claims do not even mention trying the software or buying the software. Thus,
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`2
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`Petitioner Ex. 1035 Page 7
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 8 of 42 PageID #: 344
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`r'>.
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`Microsoft'sattempts to have this Court read these additional limitations into the asserted claims
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`is impermissible. Interactive GiftExpress, Inc. v. Compuserve Inc., 256 F.3d 1323, 1341 (Fed.
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`Cir. 2001) (where "features are not recited in the independent claims, [the Court] is not at liberty
`
`to read them into the claims").
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`On pages 5-6 of its Brief Microsoft argues that three technical matters set forth in
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`. Uniloc's Background discussion describe the accused product instead of the '2]6 patent. The
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`following demonstrates that, contrary to Microsoft's argument, the three technical issues
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`identified by Microsoft are described in the '2] 6 patent specification:
`
`(1)
`
`Information Sent To Software Manufacturer is Encrypted
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`The '216 patent clearly shows encryption in Figure 2b of the patent. Moreover, at the top
`
`ofcol. 7, the '216 patent recites:
`
`As shown in FIG. 2b, the first step in the generation of the security key comprises
`the generation of a serial number generated from the current time on the system
`and, in this example, the last modify date of the software and other information
`from the computer environment. The serial number is encrypted and rearranged
`and then presented as a number in the registration dialogue box on the display.
`
`Likewise, col. 8, lines 56-65 of the '216 patent recites:
`
`Both the key file (stored with the software) and the duplicate key file are
`encrypted and both contain identical information. The information contained
`comprises:
`
`1.
`
`2.
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`The user registration details including the serial number;
`
`The environment details of the computer; and
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`Details of the application protected by the security routine for which
`3.
`registration is to be or has been obtained.
`
`3
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`Petitioner Ex. 1035 Page 8
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`....- ~
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`(2)
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`Storing and Comparing Software Copy Number
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`Microsoft next argues that storing and comparing a unique software number is not
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`disclosed in the patent To the contrary, in col. 6, lines 8-14 of the '216 patent, the following
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`comparison of stored values is described:
`
`Mode switching means can comprise execution ""of the code portion" which
`additionally performs a comparison of the locally and remotely generated
`registration numbers.
`
`In addition, the following is described in column 8, line 66 - column 9, line'S:
`
`With reference to FIG. 3, whenever the protected application boots, a check is
`made by the registration routine to determine whether registration details exist in
`the key file of the protected application. If they do, a comparison is made by the
`registration routine between what is stored in the key file and the environment "to
`determine whether a change has taken place to the environment as compared with
`what is stored in the key file.
`
`\.. )
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`Thus, storing and comparing is disclosed.
`
`(3)
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`Validating User Number and Authorizing User
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`Lastly, Microsoft argues that the patent does not disclose the software manufacturer
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`validating the user's number and authorizing the user to use the software. To the contrary, col. 7,
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`lines 22-39, of the '216 patent recite as follows:
`
`the prospective new user
`As an integral part of the registration procedure,
`communicates the information unique to the user which was entered by the user
`on the user PC, along with the serial number generated by the user's algorithm, to
`the registration authority. The registration authority feeds this information into
`the registration authority PC wherein the registration number algorithm should
`produce ail identical registration number or security key to that produced by the
`user PC if the details communicated to the registration authority by the
`prospective new user match with the details that have been entered on the user
`PC. Optionally, the user can communicate the information to the registration
`authority electronically, e.g., by fax or modem or tone phone.
`.
`
`As a final stage in registration (refer to FIG. 2d), the registration authority
`provides the registration number generated by the registration authority PC to the
`user.
`
`4
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`Petitioner Ex. 1035 Page 9
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 10 of 42 PageID #: 346
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`Thus, the'2i6 patent clearly discloses validation and authorization. That this language also
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`describes the accused Microsoft products is not surprising given the close technical simIlarities
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`between the accused products and the asserted claims of the '216 patent.
`
`Another theme that runs through Microsoft's Brief is that the Court must adopt certain of
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`Microsoft's proposed instructions or the claims will be invalid. This argument is legally
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`erroneous. The Court's duty at this stage is to construe the disputed claim terms as a matter of
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`law. Once the claims have been construed, Microsoft may argue that theclaims are invalid.
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`However, Microsoft's burden ofproof is to prove invalidity by clear and convincing evidence.
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`Glaxo Group Ltd. v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004). Microsoft cannot avoid
`
`that burden by requesting invalidity findings during claim construction.
`
`II '
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`DISCUSSION
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`In its opening Claim Construction Brief, Uniloc addressed each of the disputed claim
`
`terms individually as those terms had been identified by the parties to each other prior to the
`
`filing ofbriefs. In response, Microsoft put the disputed terms into groups that Microsoft had not'
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`previously disclosed to, or discussed with, Uniloc. As a result, Uniloc is in a quandary as to
`
`whether it should address each term individually as in Uniloc's opening briefor in groups as in
`
`Microsoft's brief. As Uniloc is responding herein to Microsoft's Claim Construction Brief,
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`Uniloc will address the disputed claim terms as set forth in Microsoft's brief.
`
`(A)
`
`Group 1 - Licensee Unique ID and Its Generation
`
`1.
`
`"Licensee Unique ID;" "Registration Key;"
`"Enabling Key;" Security Key"
`
`C.l~ifii'r~tffi'~::;]~''::{,:::~': ~:(+~~':, , :-, ~ ~':::; Microsoft construction
`Licensee unique ID
`A one of a kind (i.e. unique)
`identifier that is entirely the
`product of data about the user,
`not the platform, generated
`
`UnilocCoristruction
`
`A Unique Identifier associated ,
`with a licensee.
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`5
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`Petitioner Ex. 1035 Page 10
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 11 of 42 PageID #: 347
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`!
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`(
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`\
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`)
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`locally, and that is not the
`product of either (1) data
`added before delivery of the
`software to the local location
`for use (such as a sequence of
`characters provided by the
`software vendor, for example,
`on a printed label
`accompanying the software),
`or (2) data added subsequently
`from a remote location (such
`as from the software vendor),
`and where the uniqueness of
`the identifier is provided
`entirely by the end user in the
`course of supplying his or her
`own identifying user details.
`
`Microsoft groups these four terms together. As a result, Microsoft's proposed definition is
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`unwieldy and will undoubtedly be confusing to the jury. Cf Sulzer Textil AG v. Picanol NY, 358
`
`( )
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`F.3d 1356, 1366 (Fed. Cir. 2004) (the Court's claim construction should be such that it can be
`
`. "understood and given effect by the jury.") This is precisely the type of confusing claim
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`construction by Microsoft that was rejected by the court in the prior Intertrust v. Microsoft case.
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`See Intertrust Techs. Corp. v. Microsoft Corp., 275 F. Supp.2d 1031 (N.D. Cal. 2003)1
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`The Court of Appeals for the Federal Circuit has previously reiterated that "one of the
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`cardinal sins ofpatent law -- [is] reading a limitation from the written description into the
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`claims." Phil/ips v. A WH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (quoting SciMed Life Sys.,
`
`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. Cir.2001». As is
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`apparent from Microsoft's verbose proposed construction above, Microsoft is attempting to have
`
`the Court read numerous limitations into the claim terms "Licensee Unique ID", "Registration
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`1A copy of the Intertrust claim construction decision is attached as Exhibit B to Uniloc's
`Opening Claim Construction Brief.
`.
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`6
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`Petitioner Ex. 1035 Page 11
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 12 of 42 PageID #: 348
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`,.....-....\
`(
`}
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`Key", "Enabling Key" and "SecurityKey", Microsoft wants to transform these simple two and
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`three-word claim limitations into a l04-word tongue twister ofthe type firmly rejected by Judge
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`Armstrong in the Intertrust case. See Intertrust v.Microsoft 275 F. Supp.2d at 1073 (rejecting
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`Microsoft's proposed definition "that [was] 'nothing short of gargantuan in length"). Uniloc
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`submits that the court should adopt Uniloc's proposed definition of these terms which is "a
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`'unique identifier associated with a licensee". This definition is concise, clear and readily
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`understandable to a jury.
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`Microsoft dissects it's proposed definition of these terms into "three principle assets".
`
`See MS Brief, p. 11. Uniloc addresses these aspects below seriatim.
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`2.
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`Unique
`
`Microsoft argues that the term "unique" means "one-of-a-kind", i.e., no possibility of
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`duplication. Microsoft's proposed definition is inconsistent with the specification of the '216
`
`patent Microsoft does not identify anywhere in the '216 patent wherein the term "unique" is
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`defined either as "one-of-a-kind" or without possibility of duplication. In fact, Microsoft
`
`. recognizes that the '216 patent uses the term "unique" as a relative, rather than an absolute,
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`value. See MS Brief, p. 34. Uniloc'sproposed definition of ''unique'' is consistent with the
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`patent specification. First, the patent expressly puts the term "unique" in quotation marks and
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`states that it "can be" unique not that it must be one-of-a-kind:
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`The algorithm provides a registration number which can be "unique" if the details
`provided by the intending licenses upon which the algorithm relies when executed
`upon the platform are themselves "unique",
`
`Ex. A, first page, Abstract.
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`In col. 6, lines 23-26 of the '216 patent, the specification confirms that the term ''unique''
`
`is a relative term:
`
`7
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`Petitioner Ex. 1035 Page 12
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 13 of 42 PageID #: 349
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`In any event, in particular preferred forms, a serial number (see further on) is
`included in the registration number generation algoritlun which introduces an
`additional level of uniqueness into the registration number calculation process.
`
`Thus, the '216 patent clearly does not treat the term "unique" as an absolute value limited to
`
`"one-of-a-kind".
`
`Microsoft relies upon extrinsic evidence, a dictionary definition, in support of its "one-of-
`
`a-kind" argument. See MS Brief, p. 33. However, Microsoft ignores part ofits own profit
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`dictionary definition. More particularly, Microsoft's definition includes an "Informal" meaning
`
`of the term "unique" which is "unusually" or "extraordinary". See MS Brief, p. 33. These
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`definitions are consistent with Uniloc's proposed construction and with the fact that the term
`
`"unique" in the patent was placed within quotation marks. In additionMicrosoft has previously
`
`litigated the issue of uniqueness. In Nash v, Microsoft Corp., Civil Action No. H-03-l667, in the
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`Southern District ofTexas, Judge Hoyt rejected Microsoft's argument and found the term unique
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`to mean ''highly rare". See Ex. F, pp. 6-9.2
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`3.
`
`Licensee Unique ID Cannot Be
`Based on Software Vendor Information
`
`Microsoft's second argument is that no information provided by the seller of the software
`
`may be used to create the Licensee Unique 1D. See MS Brief, pp. 14-18. Once again, Microsoft
`
`is improperly attempting to read limitations into the claim. Interactive v, Compuserve, 256 F.3d
`
`at 1341 (where "features are not recited in the independent claims, [the Court] is not at liberty to
`
`read them into the claims"). There is nothing in the language of the asserted claims prohibiting
`
`the use ofinformation provided by the seller of the software to create the Licensing Unique lD.
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`Microsoft knows this to be true. Thus, Microsoft offers a misinformed and strained argument
`
`2 Exhibits A-E were submitted with Uniloc's opening brief.
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`8
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`Petitioner Ex. 1035 Page 13
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 14 of 42 PageID #: 350
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`that somehow Uniloc conceded, during prosecution of the '216 patent, that software vendor
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`information cannot ever be used to create the Licensing Unique ID. MS Brief, pp. 15-18. .
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`Microsoft misconstrues the prosecution of the '216 patent and fails the rigid test for
`
`prosecution history disclaimer. As set .~orth below, Microsoft does not identify any statement
`
`from the prosecution history of the '216 patent wherein-Uniloc clearly and unambiguously stated
`
`that the claims of the '216 patent prohibited any and all use of software vendor information in
`
`creating the Licensing Unique ID. Thus, Microsoft's argument fails as amatter oflaw.
`
`Sorenson v. U.S. Intern. Trade Com'n, 427 F.3d 1375, 1378-79 (Fed. Cir. 2005) ("[d]isclaimers
`
`based on disavowing actions or statements during prosecution, however, must be both clear and
`
`unambiguous"). See also Eagle Comtronics, Inc. v. Arrow Comm. Labs., Inc., 305 F.3d 1303,
`
`1316 (Fed. Cir. 2002) (patentee did not make clear disavowal when distinguishing prior art);
`
`\,
`
`)
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`Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358-60 (Fed. Cir. 2003):
`
`Microsoft concedes, as it must, that the literal scope of the claims covers using vendor
`
`information, and instead cobbles together several passages from the file history to argue that
`
`U.niloc somehow disclaimed using that information. MS Brief, pp. 14-18. Not only was there no
`
`disclaimer of using vendor information, but, to the contrary, the patent issued immediately after
`
`both the Patent Office and Uniloc affirmatively and explicitly agreed the claims encompass using
`
`such information. In the Second Office Action, the Examiner stated:
`
`There is, however, no indication in Grundy that this information cannot be
`provided to the local user, nor is there any limitation in the claims which would
`prohibit vendor information from being part o(the authorization process.
`
`(March 30,1995 Office Action at 3, UNILOC 0135; emphasis added). The Patent Office could
`
`not have been clearer. It was telling Uniloc that Grundy does not forbid using vendor
`
`9
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`Petitioner Ex. 1035 Page 14
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`

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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 15 of 42 PageID #: 351
`
`t --'·'
`}
`
`\.
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`information, and that Uniloc's ~Iaims would clearly encompass using such information,
`
`In
`
`response, Uniloc specifically, and correctly, addressed the Patent Office's point by stating
`
`In the Examiner's last paragraph relating to Grundy, the Examiner argues that .
`Grundy does not preclude providing additional information to the local user. The
`fact, if true, that Grundy does not teach away from providing.the information does
`not therefore mean that Grundy teaches that the information is provided or that
`doing so would be obvious.
`
`(Amendment in Response to March 30, 1995 Office Action at 9, UNILOC 0146) In essence,
`
`Uniloc agreed that the claims cover using vendor information, but noted the claims were still
`
`'allowable because Grundy does not disclose, nor does it render obvious, the use of vendor
`
`information. Thus, both the Patent Office and Uniloc interpreted the claims as covering the use
`
`of vendor information, and the Patent Office allowed the claims having that scope. Quite simply,
`
`there can be no disclaimer ofusing vendor information as suggested by Microsoft when the
`
`Patent Office and Uniloc affirmatively agreed it is covered by the claims.
`
`. J
`
`! \
`
`Microsoft fails to mention this dispositive portion of the file history and instead uses
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`snippets of the file history to read non-infringement arguments into the .claim construction.
`
`Microsoft premises its argument almost entirely on a fiction that Uniloc somehow distinguished
`
`between the use ofso-called "local information" and ''remote information" -- terms Microsoft
`
`manufactured for purposes of this litigation. It is clear when reading Microsoft's supposed
`
`support within the surrounding context, however, that Uniloc distinguished its invention by
`
`focusing on the output of the algorithms, and that Microsoft is isolating the passages to portray
`
`Uniloc's statements during the prosecution into somehow relating to the inputs.
`
`A proper interpretation ofUniloc's statements is clear when they are read in light of their
`
`surrounding context. Immediately, preceding one ofthe passages provided by Microsoft, Uniloc
`
`laid the foundation for the points Microsoft cites by saying:
`
`10
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`Petitioner Ex. 1035 Page 15
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`

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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 16 of 42 PageID #: 352
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`,,
`. ,
`
`In response, the Applicant submits herewith redrafted claims, the main claims of
`which include, broadly, the following two distinguishing limitations:
`The "Licensee Unique ID" on which the registration system relies
`(a)
`for matching forverification purposes is generated locally, and
`The algorithm used generate locallv the f'Licensee Unique /D" is
`replicated remotely for purposes of remote generation ora
`separate t'Licen~ee Unique /D." for matching purposes.
`
`(b)
`
`(Amendment in Response to March 30, 1995 Office Action at 6, UNILOC 01'43; emphases
`
`added) . Put simply, in this example, an algorithm at the local computer generates a unique
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`identifier from whatever information is input, an algorithm at the remotecomputer also generates
`
`a unique identifier from the information, and the two unique identifiers are compared: The first
`
`passage Microsoft relies upon at the top ofpage sixteen distinguishes Grundy because the system
`
`in Grundy takes the output of the algorithm from the local side, sendsit to the remote side, and
`
`then adds even more information at the remote side. There is simply no discussion of
`
`"
`}
`
`.......'
`
`Microsoft's distinction between so-called "local information" or v'remote information" being
`
`input into the algorithm, rather Uniloc is discussing with the Patent Office what Grundy does
`
`with the output of the algorithm. Microsoft omits the next sentence of the response which makes
`
`this very point by saying "[b]ecause additional information is added at the remote computer in
`
`Grundy, it follows automatically that a simple comparison or match of the registration code
`
`. derived from the local computer and the authorization derived from the remote computer is not
`
`possible." (Amendment in Response to June 24, 1994 Office Action at 4~5, UNILOC 0129-130)
`
`Similarly, Microsoft's citation at the bottom ofpage sixteen immediately follows the
`
`passage block-quoted above, and reiterates the same point. The first sentence stresses point (a)
`
`from the above quotation and states that the unique identifier in Uniloc's invention, "the'
`
`Licensee Unique ID," results from local generation.
`
`In the Chou patent, the only unique
`
`identifiers are inputs into the algorithm which renders a non-unique output. In Grundy, the
`
`11
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`Petitioner Ex. 1035 Page 16
`
`

`
`..
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`r>.
`
`t.1
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`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 17 of 42 PageID #: 353
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`output of the algorithm is sent to the remote side to create a unique identifier. Uniloc was simply
`
`pointing out to the Patent Office that the outputs of Chou and Grundy were'not locally generated
`
`Licensee Unique IDs. Microsoft ignores the surrounding context of the statement, and ,tries to
`.
`capitalize on the imprecision of the sentence when isolated from the rest ofthe response.
`
`,
`
`Moreover, the second paragraph of the citation at the bottom ofpage sixteen further
`
`underscores the same point. 'Uniloc' s statement to the Patent Office that "the uniqueness of
`
`identity by which each copy of the software to be protected is distinguished from any other is
`
`provided by each and only each new user," simply means that the user's local computer
`
`generates the unique identifier from whatever information is input into the algoritlnn.
`
`(Amendment in Response to March 30, 1995 Office Action at 7, UNILOC 0144). Uniloc makes
`
`this distinguishing feature even more clear when it states "to reiterate the system does not
`
`require the introduction ofany unique identifiers from any other source, either before delivery of
`
`the software for use by the intending user of subsequent to delivery thereof." Id. (emphasis
`
`added). Put simply, Uniloc was telling the Patent Office that the use of unique identifiers from
`
`other sources is optional in the Uniloc system, i.e., the Uniloc system does not require unique
`
`identifiers from other sources, because the user's local computer generates a unique identifier
`
`which is compared with a unique identifier generated at the remote computer.
`
`In other words,
`
`Uniloc stressed to the Patent Office that the Uniloc system is agnostic with respect to what
`
`information is input by the user because the algorithm creates a unique output to be checked
`
`against the output at the remote location. The Uniloc system simply does not care whether the
`
`information is vendor information, machine information, personal information, or any other type
`
`of information. It is this simplicity, as with many useful inventions, that makes the Uniloc
`
`system so powerful and effective.
`
`(
`-"
`
`12
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`Petitioner Ex. 1035 Page 17
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`

`
`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 18 of 42 PageID #: 354
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`In short, reading Microsoft's passages in the proper context exposes the ''up is down"
`
`nature of Microsoft's prosecution history disclaimer argument. Uniloc and the Patent Office
`
`were talking about the ouputs of the algorithm, and now Microsoft' want to flip the argument
`
`around to somehow disclaim certain inputs for which Microsoft created the special name "local
`
`information." Yet, we know Microsoft is wrong for two reasons. The first reason involves
`
`pulling at the threads of a tapestry ofmischaracterization to expose Microsoft's attempt to
`
`rewrite the intrinsic evidence. The second reason is much more straightforward. Microsoft is
`
`wrong because the Patent Office and Uniloc agreed the claims cover the use ofvendor
`
`information immediately prior to allowance, and no amount of litigation spin can change that
`
`fact. Quite simply, there was no disclaimer ofvendor information. See Sorenson v. lTC, 427
`
`F.3d at 1378-79 ("[d]isclaimers based on disavowing actions or statements during prosecution,
`
`)
`
`however, must be both clear and unambiguous"). Microsoft has not identified any clear and
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`unambiguous disavowal.
`
`4.
`
`Licensee Unique ID Based On User
`Information, Not Computer Information
`
`The third prong of Microsoft's argument is that information about the user must be used .
`
`to create the licensee unique ID and that information about the user's computer can ~ be
`
`used. As with its prior argument, Microsoft misconstrues the prosecution history and fails the
`
`test for prosecution history estoppel.
`
`.
`
`Microsoft refers to several places in the patent and the prosecution history wherein
`
`Uniloc discusses the content of certain prior art patents. Nowhere, however, does Microsoft's
`
`point to any clear and unambiguous statement by Uniloc that the patent claims exclude any and
`
`all information about the user's computer and are limited solely to a licensee unique ID created
`
`from information about the user. The Court of Appeals for the Federal Circuit has made clear
`
`13
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`Petitioner Ex. 1035 Page 18
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`

`
`Case 1:03-cv-00440-WY-DLM Document 141 Filed 03/27/06 Page 19 of 42 PageID #: 355
`
`\
`
`;
`' . /
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`that discussions about the content of the prior art are insufficient to limit the claims as Microsoft
`
`urges. In Cordis v. Metronic, 339 F.3d at 1359, the Court stated as follows:
`
`We next consider statements made in the prosecution history of the 984 patent
`regarding the prior art Wiktor patent to determine whether the patentee effected a
`disclaimer of claim scope. Such a disclaimer requires clear and unmistakable
`statements of disavowal. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314,
`..
`.
`1326, slip. op. at 17 (Fed. Cir. 2003).
`
`* * *
`The first sentence