Case 1:03-cv-00440-WY-DLM Document 138 Filed 02/24/06 Page 1 of 19 PageID #: 239
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`Petitioner Ex. 1044 Page 1
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`Petitioner Ex. 1044 Page 2
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`Petitioner Ex. 1044 Page 3
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`Petitioner Ex. 1044 Page 4
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`Petitioner Ex. 1044 Page 5
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`Petitioner Ex. 1044 Page 7
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`Case 1:03-cv-00440-WY-DLM Document 138 Filed 02/24/06 Page 8 of 19 PageID #: 246
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`would also readily recognize the patent discloses hardware, e.g., a summer, as structure capable
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`of generating licensee unique IDs. '216 Patent at col. 12, 11. 62-65. Therefore, one of ordinary
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`skill in the art would read the '216 patent as disclosing both software and hardware as structures
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`capable of performing the function of generating licensee unique IDs. Moreover, one of
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`ordinary skill in the art would find no suggestion in the specification, or within the art, to limit
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`the invention as claimed only to a hardware implementation
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`Mode-Switching Means
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`11.
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`One of ordinary skill in the art would recognize the structure disclosed by the
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`'216 patent for performing the function of the mode-switching means can be software or
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`hardware. First, one of ordinary skill in the art would readily recognize the '216 patent discloses
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`software logic capable of acting as a mode switching means. See, e.g., '216 Patent at col. 6, 11.
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`12-14; col. 7, 11. 36-50; col. 8, 11. 15-28; col. I 0, 11. 35-44; col. 11, 11. 5-13; col. 11, 1. 58 - col. 12,
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`I. 2. Second, one of ordinary skill in the art would also readily recognize the patent discloses
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`hardware, e.g., a comparator, as structure capable of generating licensee unique IDs. See, e.g.,
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`'216 Patent at col. 13, 11. 37-40. Therefore, one of ordinary skill in the art would read the '216
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`patent as disclosing both software and hardware as structures capable of performing the function
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`of mode-switching means.
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`Use Mode
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`12.
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`One of ordinary skill in the art would understand the term "use mode" as used in
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`the context of the patent as having a meaning consistent with Uniloc's proposed construction.
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`Microsoft's proposed construction reads in an additional specification passage into the term.
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`8
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`Klausner Declaration re: Plaintiff's Opening
`Claim Construction Brief
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`Petitioner Ex. 1044 Page 8
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`Petitioner Ex. 1044 Page 9
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`Information Uniquely Descriptive of the Intended Licensee
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`13.
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`One of ordinary skill in the art would understand this term as having a meaning
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`consistent with Uniloc's proposed construction. Microsoft's proposed construction adds several
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`limitations that one of ordinary skill in the art would understand is inconsistent with the intrinsic
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`evidence. First, as previously discussed, the patent uses the term ''unique" in a manner
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`consistent with its use in the field to mean a low probability of duplication, and expressly
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`contemplates information that is not one-of-a-kind but that is nonetheless unique. Second,
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`Microsoft appears to be limiting its definition to the specification's disclosure of information
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`such as credit card information and name. As an initial matter, even this type of information is
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`often not "one-of-a-kind." People have the same name, and people can share credit card
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`numbers. More importantly, the specification discloses other types of information that can be
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`uniquely descriptive of an intending licensee such as Product IDs. Therefore, one of ordinary
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`skill in the art would understand this term as having a meaning consistent with Uniloc's
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`proposed definition.
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`Checking by the Registration Authority that Information Unique to the User is
`Correctly Entered
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`14.
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`One of ordinary skill in the art would understand this term, as used in the '216
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`patent, as having a meaning consistent with Uniloc's proposed construction. Microsoft's
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`proposed construction is inconsistent with how one of ordinary skill in the art would understand
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`the disclosure in the specification, and with how one of ordinary skill in the art would understand
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`the ways to implement the disclosed invention. First, there is no requirement in the claim or in
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`the other intrinsic evidence that the remote side check "at the point in time when the security key
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`is generated on the local side." In fact, some of the embodiments disclose exactly the opposite of
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`10
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`Klausner Declaration re: Plaintiff's Opening
`Claim Construction Brief
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`Petitioner Ex. 1044 Page 10
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`Case 1:03-cv-00440-WY-DLM Document 138 Filed 02/24/06 Page 11 of 19 PageID #: 249
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`what Microsoft requires of the claim -- the remote authority checks at some point after the
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`security key is generated on the local side. Moreover, from an implementation perspective, one
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`of ordinary skill in the art would find little value in the simultaneity required by Microsoft.
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`Therefore, one of ordinary skill in the art would not read the' claim language to include the
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`limitation added by Microsoft. Second, one of ordinary skill in the art would not read the term at
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`issue to require, as Microsoft does, that the "rem~te side checks to ensure that information
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`unique to the user was entered by the user without errors or mis-entry, with respect to how the
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`. !
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`user intended to enter it." As an initial matter, this form of checking required by Microsoft is
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`found nowhere in the intrinsic evidence. Rather, the intrinsic evidence makes clear that the
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`system verifies that the information is correctly entered by comparing the outputs of the
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`algorithm on each side. That is, the remote side checks the information by inputting the
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`information into the algorithm on the remote side. One of ordinary skill in the art would read the
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`file history as supporting this interpretation. UNILOC 0128 (Response to First Office Action at
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`3) ("The uniqueness is ultimately provided by the end users of the software in the course of
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`supplying their own identification details, which are subsequently checked by use of a matching
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`algorithm at a remote location."); UNILOC 0143 (Response to Second Office Action at 6) ("The
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`algorithm used to generate locally the "Licensee Unique ID" is replicated remotely for the
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`purposes of remote generation of a separate "Licensee Unique ID" for matching purposes.")
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`Finally, the requirement Microsoft seeks to add is impossible in many circumstances. Aside
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`from circumstances such as spell-check, Microsoft's reading of the claim term would require the
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`computer to understand the subjective intent of the user. For all of these reasons, one of ordinary
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`skill in the art would interpret this term consistent with Uniloc's proposed construction.
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`Klausner Declaration re: Plaintiff's Opening
`Claim Construction Brief
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`Petitioner Ex. 1044 Page 11
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`Petitioner Ex. 1044 Page 12
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`Petitioner Ex. 1044 Page 13
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`Petitioner Ex. 1044 Page 14
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`Petitioner Ex. 1044 Page 15
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`Petitioner Ex. 1044 Page 16
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`Wherein said registration system is replicated at the registration authority
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`22.
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`One of ordinary skill in the art would understand this phrase as used in the patent
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`as having a meaning consistent with the construction proposed by Uniloc. Microsoft first
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`requires all of the features present on the local side be present on the remote side. This makes no
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`sense. First, all the embodiments relate to replicating the licensee unique ID generating means
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`on the remote side. Second, one of ordinary skill in the art would understand there would be no
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`reason at all to include functionality such as the mode-switching means on the remote side.
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`Finally, one of ordinary skill in the art would understand Microsoft's reading of the claim as
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`covering no embodiments of the patent. Moreover, one of ordinary skill in the art would
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`recognize Microsoft is seeking to import its misreading of "checking" into this claim term. As
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`previously discussed, this is wrong. Finally, as discussed elsewhere, Microsoft is misreading the
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`file history as clearly and unambiguously disclai~ing the use of encryption/decryption when one
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`of ordinary skill in the art would clearly recoguize it does not. For all of these reasons, one of
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`ordinary skill in the art would understand this phrase as used in the patent as having a meaning
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`consistent with Uniloc's construction.
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`Has matched
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`23.
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`One of ordinary skill in the art would understand the term "has matched" as used
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`in the context of the '216 patent as having a meaning consistent with Uniloc's proposed
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`construction. First, one of ordinary skill in the art would not require something to match as a
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`result of a "direct comparison." Particularly in the art, matching can involve an indirect
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`comparison. For example, two groups can match after an indirect comparison shows an
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`association between the two groups. As a simple example, there are two sets of numbers below:
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`17
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`Klausner Declaration re: Plaintiff's Opening
`Claim Construction Brief
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`Petitioner Ex. 1044 Page 17
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`Case 1:03-cv-00440-WY-DLM Document 138 Filed 02/24/06 Page 18 of 19 PageID #: 256
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`I
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`I
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`2
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`4
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`3
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`9
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`4
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`16
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`5
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`25
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`6
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`36
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`7
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`49
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`8
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`64
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`A direct comparison of the top set of numbers with the bottom set of numbers would lead
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`one to conclude these sets of numbers do not match. However, when the square of the top
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`numbers are compared with the bottom number they do match -- as a result of an indirect
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`comparison. Similarly, one of ordinary skill in the art would also understand that two values can
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`match even though the are not the same. As another simple example, consider the following two
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`numbers:
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`1st Number: 123456789
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`2nd Number: 929496989
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`Obviously, these numbers are not the same, and would not match under Microsoft's
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`construction. However, if the test is whether the numbers in the even numbered-position, i.e.,
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`the second, fourth, sixth and eighth place, are the same then these numbers do match. Thus, one
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`of ordinary skill in the art recognizes two values may not be the same but can still match.
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`Finally, combining the two scenarios, consider the following two numbers:
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`1st Number: 123456789
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`2nd Number: 949169369649
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`Obviously, these two numbers are not the same. However, the values between each "9"
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`in the 2nd number is the square of the values in the even-numbered position of the 1st number,
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`and the 2nd number matches the 1st number based on this correspondence. These types of
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`relationships and correspondences are an important part of computer programming, and one of
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`ordinary skill in the art would understand the term "has matched" to include these concepts.
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`18
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`Klausner Declaration re: Plaintiff's Opening
`Claim Consttuction Brief
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`Petitioner Ex. 1044 Page 18
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`Case 1:03-cv-00440-WY-DLM Document 138 Filed 02/24/06 Page 19 of 19 PageID #: 257
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`Petitioner Ex. 1044 Page 19