IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`ééFiled: January 22, 2010
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`For: System for Software Registration
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`9 dL
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`In re reexam of: US. Patent 5,490,216 to
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`RICHARDSON, 111
`
`Confirmation No.: 2214
`
`Art Unit: 3992
`
`.
`
`Examiner: HENEGHAN, Matthew E.
`Atty. Docket: 2914.001REXO
`
`Response to Non-Final Office Action Dated January 18, 2011
`
`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 January 18, 2011. The due date for reply is March 18, 2011. The Status
`
`of the Claims is reflected in the listing of claims, which begins on page 4 of this paper.
`
`Remarks begin on page 9 of this paper.
`
`It is not believed that any fees are required with this
`
`response. But if any fees are necessary to prevent abandonment of this reexamination, then
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`such fees are hereby authorized to be charged to our Deposit Account No. 19—0036.
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`TABLE OF CONTENTS
`
`LISTING OF CLAIMS .................................................................................................. 4
`
`REMARKS .................................................................................................................... 9_
`
`I.
`
`INTRODUCTION ............................................................................................... 10
`
`A. The Rejections in the Second Action Are All Based on a Legally Erroneous
`Claim Interpretation and a Factually Erroneous Analysis of Hellman .................... 10
`
`B. The Proposed Modification of Hellman in View of Grundy is Legally
`Impermissible. ......................................................................................................... 12
`
`C. The Office Improperly Dismissed Much of Uniloc’s Rule 132 Declaratory
`Evidence. ................................................................................................................. 1 3
`
`D. The Office Has Taken Several Inconsistent Positions in This Reexamination.
`14
`
`II. OVERVIEW OF REEXAM PROSECUTION .................................................... 15
`
`A.
`
`B.
`
`First Non-Final Office Action ......................................................................... 16
`
`Second Non-Final Action. ............................................................................... 17
`
`III.
`
`RESPONSE TO THE ADOPTED SUBSTANTIVE CLAIM REJECTIONS 18
`
`A.
`
`Independent Claims 19 and 20 Are Not Anticipated by Hellman ................... 18
`
`B. Claims 1, 7-1 1, 19 and 20 Are Not Obvious Over Hellman Alone ................. 22
`
`C. Claims 1-20 Are Not Obvious Over Hellman In View of Grundy .................. 23
`
`1.
`
`Basis for the proposed combination ............................................................ 23
`
`The Examiner mischaracterized Hellman in supporting the purported
`2.
`motivation to combine. ........................................................................................ 25
`
`3.
`
`Examiner mischaracterized Grundy’s use of checksums. ........................... 27
`
`The proposed combination would fundamentally change the operation of
`4.
`Hellman in a way Hellman expressly forbids. ..................................................... 28
`
`Even with proposed modification, Hellman still does not generate a licensee
`5.
`unique ID.
`...................... 31
`
`D. Dependent Claims 2, 12 and 17 Are Also Not Obvious Over Hellman In View
`of Grundy ................................................................................................................. 32
`
`The Examiner mischaracterized Grundy in supporting the proposed
`1.
`motivation to combine. ........................................................................................ 32
`
`2.
`
`The Examiner has again mischaracterized Grundy’s use of checksums.
`
`33
`
`IV.
`
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS ....................................... 34
`
`A. Uniloc Has Conclusively Established the Commercial Success of At Least
`Independent Claim19 ............................................................... 36
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`l. Uniloc has conclusively established a nexus between independent claim 19
`and Microsoft’s Product Activation technology .................................................. 36
`
`2. Uniloc has conclusively established the commercial success of Microsoft’s
`Product Activation technology ............................................................................ 37
`
`3.
`
`Summary for Commercial Success ................................ ............................. 38
`
`B. The ‘216 Patented Technology Met a Long-Felt Need ................................... 38
`
`C.
`
`Failure by Others. .......................................i..................................................... 40
`
`D. Conclusion with Respect to Objective Indicia of Non-Obviousness ............... 41
`
`V.
`
`STATUS OF CONCURRENT LITIGATION .................................................... 41
`
`IMPROPER GRANT OF A SUBSTANTIAL NEW QUESTION OF
`VI.
`PATENTABILITY ...................................................................................................... 42
`
`VII.
`
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW .................... 44
`
`CONCLUSION ............................................................................................................ 45
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Listing of Claims
`
`Original claims 1-20 from US. Patent No. 5,490,216 to Richardson (“the ‘216
`
`patent”) are subject to ex parte reexamination. No claims are added, cancelled or amended.
`
`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
`
`data only if said licensee unique ID generated by said local licensee unique ID generating
`
`means has not changed.
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`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.
`
`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
`
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`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 asto 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
`
`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
`
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`RICHARDSON, III
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`Reexam of Pat. No. 5,490,216
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`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
`
`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
`
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`RICHARDSON, III
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`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`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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`- 9 —
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`Remarks
`
`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Original claims 1-20 from US. Patent No. 5,490,216 to Richardson (“the ‘216
`
`patent”) are subject to ex parte reexamination. The reexamination was ordered on April 9,
`
`2010.
`
`(Reexam Order.) In the first Office action dated September 28, 2010 (“First Action”),
`
`claims 1-20 were rejected solely under 35 U.S.C. § 103(a) over US. Patent No. 4,658,093 to
`
`Hellman in View of US. Patent 5,291,598 to Grundy.l
`
`(First Action, p. 6.) An in-person
`
`interview was conducted on November 17, 2010. The patent owner Uniloc then responded
`
`with a timely reply on November 29, 2010 (“Reply”). The Reply was supported by four
`
`declarations under 37 CPR. § 1.132 (“Rule 132”) from Ravinda Marwaha, Brad Davis, Ric
`
`B. Richardson and William R. Rosenblatt.
`
`In response to the Reply, the Office issued a second non-final Office action dated
`
`January 18, 2011 (“Second Action”).
`
`In the Second Action, claims 1-20 remain rejected as
`
`obvious over Hellman in view of Grundy. The Office also added two additional grounds of
`
`rejection for certain claims. Specifically, independent claims 19 and 20 now stand rejected
`
`under 35 U.S.C. § 102(b) over Hellman, while claims 1, 7-1 1, 19 and 20 stand rejected under
`
`35 U.S.C. § 103(a) as obvious over Hellman—a single reference § 103 rejection. Uniloc
`
`respectfully traverses all
`
`three rejections and requests that
`
`they be reconsidered and
`
`withdrawn.
`
`' In the First Action, the Examiner misstated the patent numbers for both Hellman and
`Grundy.
`(First Action, p. 4.) Those errors were not corrected in the Second Action. The
`correct patent numbers are listed above.
`
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`RICHARDSON, III
`
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`I.
`
`INTRODUCTION
`
`The Rejections in the Second Action Are All Based on a Legally
`A.
`Erroneous Claim Interpretation and a Factually Erroneous Analysis of Hellman.
`
`In supporting its new grounds of rejeCtion,
`
`the Office in the Second Action has
`
`expanded its construction of “licensee unique ID generating means” to encompass an
`
`unreasonably broad scope. The new construction reads: “an ID
`
`created that is associated
`
`with a request that includes information provided by and specific to a user, such as billing
`
`infomiation.” (Second Action, p. 14; emphasis added.) By decoupling the creation of the
`
`claimed “licensee unique ID” from any information uniquely associated with an intended
`
`licensee, and instead asserting that it need only be “associated with a request” that includes
`
`user specific information, the Office has impermissibly stretched the claim scope beyond that
`
`permitted by the broadest reasonable interpretation standard.
`
`In re Suitco Surface, 603 F .3d
`
`1255 (Fed. Cir. 2010). This impermissibly broad construction forms the basis for each of the
`
`three separate grounds of rejection set forth in the Second Action.
`
`In applying this new construction, the Office asserts that Hellman’s authorization A
`(or check value C) is “functionally equivalent to the means disclosed in the ‘216 patent.”
`
`(Second Action, p. 9.) But this directly conflicts with governing case law for claims recited
`
`under 35 U.S.C. §. 112(6), which requires identity of function, not equivalent function.
`
`Pennwalt Corp. v. Durand— Wayland. Inc., 833 F.2d 931, 934 (Fed. Cir. 1987) (en banc). The
`
`Office is required to interpret means—plus function claims in the same manner as the Courts.
`
`In re Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994).
`
`To suggest
`
`that “functional
`
`equivalence” is the standard for determining whether a reference anticipates a feature claimed
`
`under the statutory provisions of § 1 12(6) is contrary to law.
`
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`‘
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`Regardless of the Office’s application of its new construction of “licensee unique 1D
`
`generating means,” the Office has also factually mischaracterized Hellman with respect to
`
`that term. Contrary to the Office’s interpretation, the BILLING INFORMATION is not
`
`associated with authorization A (or check value C).
`
`(See, Hellman FIG. 2; 6:16-30; 726-13;
`
`FIG. 7; and 10:14-32.) Nor is any user specific information input to Hellman’s cryptographic
`
`function generators that generate A and C.
`
`(161.)
`
`Indeed, Hellman explicitly states that
`
`authorization A is n_o_t associated with a user, but rather is base unit (e.g., a personal
`
`computer) specific. (Hellman, 12:1-9.)
`
`The Federal Circuit came to the same conclusion in a decision rendered two weeks
`
`prior to the Second Action when it considered whether the very same Hellman reference
`
`anticipated the very same claim limitation in an invalidity charge against the very same patent
`
`at issue here. The Federal Circuit stated:
`
`The “user billing information” in [Hellman] is not an input into the hash
`function and is thus irrelevant in determining whether [Hellman] discloses the
`“licensee unique ID” and “licensee unique 1D generating means” elements of
`the ‘216 patent.
`
`Uniloc USA, Inc. v. Microsoft Corp, —-— F.3d -—-, 2011 WL 9738, *56, n. 3 (Fed. Cir. 2011).
`
`While a court’s decision that a patent is not invalid is generally not binding on the Office, the
`
`situation in this case is unusual. The Office ought to give deference to a Federal Circuit
`
`decision where it ruled on the same issue now before the central reexamination unit —
`
`whether Hellman anticipates claim 19 of the ‘216 patent. This is especially true where the
`
`claim terms at issue are drafted under § 112(6) and the Office must interpret this term in the
`
`same manner as the courts. In re Donaldson, 16 F.3d 1 189, 1 193 (Fed. Cir. 1994).
`
`The Office’s legally erroneous interpretation of “licensee unique ID” and factually
`
`erroneous interpretation of Hellman together form the basis for all three separate grounds of
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`RICHARDSON, III
`Reexam ofPat. No. 5,490,216
`Control No. 90/010,831
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`rejection set forth in the Second Action. On either basis alone, all three rejections should be
`
`reconsidered and withdrawn.
`
`The Proposed Modification of Hellman in View of Grundy is Legally
`B.
`Impermissible.
`
`The proposed combination of Hellman and Grundy is legally flawed.
`
`First,
`
`the
`
`Examiner mischaracterized Hellman in supporting the purported motivation to combine
`
`Hellman and Grundy.
`
`In searching for a motivation to use a simple algorithm in place of
`
`Hellman’s cryptographic functions, the Examiner mistakenly pointed to a portion of Hellman
`
`referring to Hellman’s hash function 22.
`
`Second, the Examiner mischaracterized Grundy’s use of checksums in supporting the
`
`proposed combination. Third, no one skilled in the art would have modified Hellman’s
`
`cryptographic function generator
`
`to include Gmndy’s checksum algorithms because
`
`Grundy’s checksums are an entirely different class of algorithm than the cryptographic
`
`functions that Hellman unambiguously states are required for his invention.
`
`Finally, the proposed modification to Hellman still does not address Hellman’s main
`
`deficiency that it does not use any information uniquely associated with an intended licensee
`
`to generate its authorization A (or check value C).
`
`Thus, even with the proposed
`
`modification in view of Grundy, Hellman’s system still does not generate the claimed
`
`“licensee unique ID,” which as a matter of law is evidence that the invention is not obvious.
`
`MPEP 2143 ( Obviousness requires “a finding that the prior art
`
`included each element
`
`claimed, although not necessarily in a single prior art reference, with the only difference
`
`between the claimed invention and the prior art being the lack of actual combination of the
`
`elements in a single prior art reference”). Any one of these errors are sufficient to warrant
`
`reversal of the § 103 rejection of Hellman in View of Grundy.
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`_
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`The Office Improperly Dismissed Much of Uniloc’s Rule 132 Declaratory
`C.
`Evidence.
`‘
`
`The Office also improperly dismissed the majority of Uniloc’s Rule 132 evidence
`7
`proffered in support of its validity positions as “unpersuasive.’ For example, the Second
`
`Action failed to state with any specificity why Rosenblatt’s declaratory evidence was not
`
`persuasive, as it was required to do by the Office’s own rules. MPEP 716.01. General
`
`statements such as “the declaration lacks technical validity” or “the evidence is not
`
`commensurate in scope with the claims” without explanation supporting such findings are
`
`unacceptable. 1d. The Second Action therefore breached the rules by summarily dismissing
`
`Rosenblatt’s declaration as consisting “entirely of opinions.” Indeed, the Federal Circuit has
`
`stated that “we are aware of no reason why opinion evidence relating to a fact issue should
`
`not be considered by an examiner.” In re Alton, 76 F.3d 1168, 1 175, n. 10 (Fed. Cir. 1996).
`
`In fact, much of that evidence was relevant and probative to the validity analysis, and
`
`conformed to the Office’s own standards for declaratory evidence. Opinion on the ultimate
`
`legal conclusion is not entitled to any weight, although the underlying basis for the opinion
`
`may be given some weight.
`
`In re Chilowsky, 306 F.2d 908 (CCPA 1962). Although a
`
`declarant’s opinion on the ultimate legal
`
`issue is not evidence in the case, “some weight
`
`ought to be given to a persuasively supported statement of one skilled in the art on what was
`
`not obvious to him.” In re Lindell, 385 F.2d 453 (CCPA 1967).
`
`The ultimate determination of patentability must be based on consideration of the
`
`entire record by a preponderance of the evidence.
`
`In re Oetiker, 977 F.2d 1443 (Fed. Cir.
`
`1992). Each piece of rebuttal evidence should not be evaluated for its ability to “knock
`
`down” the prima facie case. All of the competent rebuttal evidence, taken as whole, should
`
`be weighed against the evidence supporting the prima facie case.
`
`In re Piasecki, 745 F .2d
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`RICHARDSON, III
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`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`1468 (Fed. Cir. 1984). Expert opinion supported by documentary evidence may be given
`
`weight.
`
`In re Carroll, 601 F.2d 1184 (CCPA 1979). Further, evidence of non-technological
`
`nature is pertinent to the conclusion of obviousness.
`
`In re Piasecki, 745 F .2d 1468, 1473
`
`(Fed. Cir. 1984) (finding that the declarations of those skilled in the art regarding the need for
`
`the invention and its reception by the art were improperly discounted by the Board.) Office
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`personnel should avoid giving evidence no weight, except in rare circumstances. See In re
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`Alton, 76 F.3d at1174—75.
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`Uniloc stands behind the sworn declarations it submitted in support of its response to
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`the First Action. Uniloc requests that the Office reconsider its dismissal of that evidence.
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`Finally, in support of the present response to the Second Action, Uniloc has submitted a
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`supplemental declaration by William Rosenblatt (“Rosenblatt Supp. Dec.”) and a declaration
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`by Dr. Udo Pooch (“Pooch Dec.”).
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`The Office Has Taken Several Inconsistent Positions in This
`D.
`Reexamination.
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`The rejections under sections 102 and 103 are inconsistent with respect
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`to the
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`interpretation of Hellman. For instance, in the § 102 rejection, the Second Action alleges that
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`Hellman’s authorization A or C is “effectively specific to a licensee” (Second Action, p. 9),
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`while in the § 103 rejection, the Examiner states that “Hellman does not disclose that the
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`information being combined in the algorithm is uniquely descriptive of an intended licensee,
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`but merely the intended licensee’s computer.” (Office Action, p. 15). These statements are
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`contradictory. One implies that Hellman’s authorization is effectively specific to a licensee,
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`while the other acknowledges that it is not.
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`Uniloc’s consistent position, which as a matter of law has been confirmed by the
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`Federal Circuit,
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`is that
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`the claimed “licensee unique ID” must be “a unique identifier
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`Patent Owner Ex. 2006 Page 14
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`Patent Owner Ex. 2006 Page 14
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`- 15 -
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`'
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`RICHARDSON, III
`
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`associated with a licensee.” Uniloc v. Microsoft, Case No. 03-4408, slip op. at 21 (D.R.I.
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`2006). To accomplish this, there must be some input to the means for generating the claimed
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`“licensee unique ID” that characterizes the intended user. Hellman’s cryptographic function
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`generator has no such input and, as the Examiner correctly acknowledged (Second Action, p.
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`20), its output is solely descriptive of the licensee’s computer.
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`(See, Hellman, 6:16 - 7:2.)
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`Therefore, even under a broadest reasonable interpretation standard, Hellman’s cryptographic
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`function generator does not
`7
`generating means.’ Uniloc’s interpretation is the more reasonable position and should be
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`(and cannot) anticipate the claimed “licensee unique ID
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`adopted by the Office as it was by the Federal Circuit.
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`'
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`The Office is also inconsistent in its interpretation of Grundy.
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`In the Reexam Order,
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`the Examiner stated that “[c]hecksums are not unique fields, even if they are at least in part
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`derived from unique data.” (Reexam Order, p. 9.) In the Second Action, the Examiner stated
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`that Grundy’s “unique ID, a registration code, is produced by performing a checksum of the
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`user data component
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`fields.”
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`(Second Action, p.
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`14.)
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`These two statements are
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`contradictory. The first states that Grundy’s checksums are not unique; the second states that
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`that Grundy’s checksum can produce a unique ID. Uniloc submits that based on the
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`Examiner’s statement in the Order, Grundy’s data validation checksums do not produce a
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`unique ID that could be used by Hellman.
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`II.
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`Overview of Reexam Prosecution
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`Uniloc provides below an overview of the prosecution to date in this ex parre
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`reexamination.
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`Atty. Dkt. No. 2914.001REXO
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`- l6 -
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`A.
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`First Non-Final Office Action
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`In the First Action, the Office attempted to equate Hellman’s “cryptographic function
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`generator” to the claimed “licensee unique ID generating means” in the ‘216 patent.
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`(First
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`Action, p. 6.) It is undisputed that this feature is recited in means-plus-function format under
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`35 U.S.C. § 1 12(6).
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`In the First Action, the Office identified the corresponding structure as a
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`hardware summer and recognized that the summer could-also be implemented in software.
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`(First Action, p. 5.) But the Office did not explicitly identify the function, as it was required
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`to do, and therefore made no explicit finding regarding identity of function. All the Office
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`did was parenthetically equate the “licensee unique ID generating means” to Hellman’s
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`cryptographic function generator.
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`(First Action, p. 6.)
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`It provided no further explanation
`
`regarding the claimed function. The only thing missing from Hellman, according to the
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`Office, was the corresponding structure—namely,
`
`the summer.
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`For that,
`
`the Office
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`inconsistently relied on Grundy’s checksum (First Action, p. 7) despite its earlier
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`acknowledgement that “checksums are not unique fields” (Order Granting Reexam, p. 9).
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`In reply, Uniloc argued that Hellman did not teach the claimed function—that is,
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`generation of the claimed “licensee unique ID” in claims 1, 19 and 20, the “security key” in
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`claim 12, and the “registration key” and “enabling key” in claim 17. The basis for Uniloc’s
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`position was that none of the inputs to Hellman’s cryptographic function generator included
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`any infomiation that was uniquely associated with the intended licensee; and without such
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`input, it could not generate a “licensee unique ID.” (Reply, pp. 17-25.)
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`Uniloc also argued that Grundy’s checksum did not generate “a licensee unique ID”
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`because Grundy’s checksum algorithm, by its very nature, destroys any uniqueness.
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`(Reply,
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`pp. 26-28.) Because neither reference disclosed the claimed function—Le, generation of a
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`Patent Owner Ex. 2006 Page 16
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`Patent Owner Ex. 2006 Page 16
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`_ 17 _
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`RICHARDSON, III
`Reexam of Pat. No. 5,490,216
`Control No. 90/010,831
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`licensee unique ID—Uniloc argued that the combination of references could not render
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`obvious the independent claims. Uniloc set forth its position at the November 17, 2010 in-
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`person interview and properly supported its Reply with Rule 132 declarations.
`
`B.
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`Second Non-Final Action.
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`In the Second Action,
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`the Office shifted its position and set forth a new claim
`
`construction for the “licensee unique ID generating means.” Specifically, the Office is now
`
`construing the term “licensee unique ID” to mean “an ID remotely created that is associated
`
`with a request that includes infomiation provided by and specific to a user, such as billing
`9
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`information.’
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`(Second Action, p. 9; emphasis added.)
`
`In applying that construction, the
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`Examiner asserted that Hellman’s authorization A was “effectively specific to the licensee”
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`and was therefore “functionally equivalent to the means disclosed in the ‘216 patent.” (Id. at
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`9.) “Functional equivalence” is not the correct legal standard. Pennwalt v. Durand— Wayland,
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`Inc, 833 F.2d 931, 934 (Fed. Cir. 1987) (en banc). But based on this legally flawed
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`construction, the Office now asserts that Hellman anticipates independent claims 19 and 20
`
`under 35 U.S.C. § 102(b)—a position already rejected by a Federal District Court and
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`affirmed by the Federal Circuit.
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`The remaining rejections are largely based on the same reasoning.
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`The only
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`difference between the other two rejections, according to the Examiner, appears to be
`
`“whether or not the scope of the terms ‘local licensee unique ID generating means’ and
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`‘remote licensee unique ID generating means’ encompasses implementations that do not
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`include a summer in the algorithm.” (Second Action, pp. 12-13 and 14.) To address