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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`KASPERSKY, INC.
`Petitioner,
`v.
`UNILOC USA, INC. AND
`UNILOC LUXEMBOURG S.A.
`
`Patent Owner.
`
`______________
`
`Case No.: IPR2014-XXXX
`______________
`
`DECLARATION OF EXPERT WITNESS
`ALEXANDRE ANTONOV
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 5,490,216
`
`Kaspersky Lab, Inc. - Ex. 1003
`Page 001of 20
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`
`Declaration of Alexandre Antonov
`______________________________
`
`
`1. My name is Alexandre Antonov.
`
`2.
`
`I am working on this case as an independent expert. I am compensated for
`
`my services with an hourly rate of $275 plus expenses for my work
`
`performed in connection with this Investigation. My compensation does not
`
`depend upon the contents of this declaration, any testimony I may provide,
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`or the outcome of this Inter Partes Review. I was retained by the Petitioner
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`as a technical advisor on the state of the art relevant to U.S. Patent 5,490,216
`
`(the ’216 Patent) and to give an expert opinion regarding the validity of the
`
`’216 Patent.
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`3.
`
`I have testified as a technical expert on software-related subjects before. In
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`SEC v. Courtney D. Smith, I provided an assessment of the complexity to re-
`
`create a software product. In Blue Line Media Inc. v. Redmon Group Inc., I
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`testified on the software-development process and general issues related to
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`the software product in question.
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`2
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`4.
`
`I have worked in software-related fields for the past 18 years. I am currently
`
`the CEO of Siber Enterprise Group, Inc., a software development and
`
`consulting firm.
`
`
`During my career, I have been studying, using and analyzing cryptography
`
`5.
`
`and its applications in computer systems. I have peer reviewed book
`
`“Malicious Cryptography” by Adam Young and Moti Yung published in
`
`2004.
`
`6.
`
`I have a Masters degree in Mathematics from Saint Petersburg State
`
`University in Saint Petersburg, Russia.
`
`7.
`
`The ’216 Patent is directed to a system for licensing software. Specifically,
`
`the ’216 Patent describes how software functionality that is not available in
`
`the free or demonstration version of the product can be unlocked only if an
`
`appropriate licensing procedure has been followed. Ex. 1002, 2:52-55.
`
`8.
`
`Claim 19 of the ’216 Patent reads:
`
`
`19. 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,
`
`
`
`3
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`Kaspersky Lab, Inc. - Ex. 1003
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`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.
`
`
`9.
`
`I have been informed that the specific meaning of the terms recited in claim
`
`19 are important because they define what claim 19 of the ’216 Patent
`
`covers. I further understand that the figures and text in the rest of the patent
`
`provide a description or examples of the invention and provide a context for
`
`claim 19, but it is the claim itself that defines the breadth of its own
`
`coverage.
`
`10.
`
`I have been informed that some of the terms used in claim 19 of the ‘216
`
`Patent have been construed and interpreted in prior litigation. I was also
`
`informed that because the ’216 Patent has expired, the claim terms should be
`
`
`
`4
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`interpreted in accordance with the law of claim construction that has been
`
`developed by the federal courts since the Markman decision. For this reason,
`
`I have adopted the interpretation of the claim terms given in the prior
`
`litigation.
`
`11.
`
`I understand that some of the terms or elements in claim 19 recite a function
`
`followed by the term “means.” I have been informed that the term “means”
`
`has a special meaning in patent law called the “means-plus-function”
`
`requirement. I understand that it does not cover all of the structures that
`
`could perform the function set forth in the claim. Instead, it covers a
`
`structure or a set of structures that perform that function and that is either
`
`identical or “equivalent” to the structures described in the patent for
`
`performing that function.
`
`12. One embodiment of the “remote registration station” as recited in claim 19
`
`corresponds to registration authority PC 15. Fig. 1 depicts a schematic
`
`diagram of the relationship and interaction between an intending registered
`
`user and a registration authority 15. Ex. 1002, 5:1-4. See also id. at 7:21-51
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`(further describing the “registration authority”).
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`
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`5
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`13. The “remote registration station,” as recited in claim 19, incorporates a
`
`
`
`“remote licensee unique ID generating means.” The “remote licensee unique
`
`ID generating means” is depicted as a “Remote Licensee Unique I.D.
`
`Generator” in Fig. 8. The “remote licensee unique ID generating means” can
`
`be software in the form of an algorithm, or hardware in the form of a
`
`summer. Ex. 1002, 11:53-56; 12:62-65.
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`
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`6
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`
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`I have been informed that the term “licensee unique ID generating means”
`
`
`
`14.
`
`has been construed in prior litigation to mean “a summation algorithm or a
`
`summer and equivalents thereof,” that functions “to generate a local or
`
`remote licensee unique ID/registration key.” Ex. 1012, page 25.
`
`15.
`
`I further understand that the Federal Circuit held that the algorithm MD5—a
`
`well known and a widely used cryptographic hash function could be
`
`considered a “summation algorithm.” I understand that the court found this
`
`to be true because MD5 performs the same function as the “licensee unique
`
`
`
`7
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`ID generating means,” and uses some addition to perform this function. Ex.
`
`1015, page 9.
`
`16. The “remote registration station,” as recited in claim 19, forms part of a
`
`“registration system” for licensing execution of digital data, such as a
`
`software program, in a use mode.
`
`17.
`
`I understand that the term “registration system” has been construed in prior
`
`litigation to mean “a system that allows digital data or software to run in a
`
`use mode on a platform if and only if an appropriate licensing procedure has
`
`been followed.” Ex. 1015, page 49.
`
`18. A combination of Figs. 1 and 8 substantially depict the “registration
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`system.” See also Ex. 1002, 5:46-56. (“With reference to FIGS. 1 and 8, the
`
`system according to embodiments of the invention is designed and adapted
`
`to allow digital data 39 or software to run in a use mode on a platform 31 if
`
`and only if an appropriate licensing procedure has been followed.”)
`
`19. The “digital data” as recited by claim 19 is executable on a “platform.” One
`
`embodiment of the “platform” corresponds to platform 31, as depicted in
`
`Fig. 8. Ex. 1002, 5:46-56. I understand that platform 31 is generally part of
`
`the user PC 12, as depicted in Fig. 1. Ex. 1002, 6:39-52.
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`8
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`20. The “registration system” as recited by claim 19 includes a “local licensee
`
`unique ID generating means.” The “local licensee unique ID generating
`
`means” is depicted as a “Local Licensee Unique I.D. Generator” in Fig. 8.
`
`The “local licensee unique ID generating means” can be software in the
`
`form of an algorithm, or hardware in the form of a summer. Ex. 1002, 11:53-
`
`56; 12:62-65; Fig. 9.
`
`21.
`
`I understand that the term “local licensee unique ID generating means” has
`
`been construed in the same manner as the “remote licensee unique ID
`
`generating means,” discussed above.
`
`22. The “registration system” as recited by claim 19 further includes “mode
`
`switching means” operable on platform 31. The “mode switching means” is
`
`depicted in Fig. 8 as a “Mode Switcher.” The “Mode Switcher” permits use
`
`of the software program only if a “licensee unique ID” (Reg. No. 66)
`
`generated by the “Local Licensee Unique I.D. Generator” matches “a
`
`licensee unique ID” (Reg. No. 66) generated by the “Remote Licensee
`
`Unique I.D. Generator.” Ex. 1002, 13:37-40; 6:12-14.
`
`23.
`
`I have been informed that the term “mode switching means” has been
`
`construed in prior litigation to mean “a program code which performs a
`
`comparison of two numbers or a comparator and equivalents thereof,” that
`
`
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`9
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`Kaspersky Lab, Inc. - Ex. 1003
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`functions “to permit the digital data or software to run in a use mode/fully
`
`enabled mode if the locally generated licensee unique ID/registration key
`
`matches with the remotely generated licensee unique ID/enabling key.” Ex.
`
`1012, page 41.
`
`24.
`
`I have been informed that the term “licensee unique ID” has been construed
`
`in prior litigation to mean “a unique identifier associated with a licensee.”
`
`Ex. 1012, page 9.
`
`25.
`
`I further understand that the Federal Circuit decided that “the licensee
`
`unique ID” does not require personal information about the user, so long as
`
`it is “unique,” and is not based solely on platform-related user information.
`
`The court has also noted that it is not required that this information “be
`
`uniquely about the user”, but instead simply “unique to the user”
`
`(highlighted in the original Opinion). Moreover, the court explicitly noted
`
`that the specification of the ’216 Patent leaves open the possibility that
`
`vendor-provided information, like a Product Key, could be the basis for a
`
`“licensee unique ID” along with platform-specific information. Ex. 1015,
`
`page 5 (citing Ex. 1013, page 4). See also Ex. 1014, pages 18-19 (“Uniloc’s
`
`argument demonstrates the inevitable blending of unique and associated in
`
`the context of the claimed invention … Since no two Product Keys are alike,
`
`
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`10
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`a ‘user associates themselves via their typing it in.’” (quoting Uniloc’s
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`Expert during trial)).
`
`26.
`
`I have been informed that the term “unique” has been construed in prior
`
`litigation to be a relative term, and that to construe the word unique to mean
`
`no possibility of duplication would be inconsistent with the specification.
`
`Ex. 1012, page 12.
`
`27. The “remote licensee unique ID generating means” comprises software
`
`executed on a platform which includes the same algorithm utilized by “the
`
`local licensee unique ID generating means.” In other words, the Remote and
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`Local Licensee Unique I.D. Generators use the same algorithm to generate
`
`the “licensee unique ID” Reg. No. 66. Ex. 1001, 3:3-9; 5:57-6:8; 7:14-22:
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`11:45-52.
`
`28. For the purpose of prior art review, I have been instructed that even though
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`an invention may not have been identically disclosed or described before it
`
`was made by an inventor, in order to be patentable, the invention must also
`
`not have been obvious to a person of ordinary skill in the field of technology
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`of the patent at the time the invention was made.
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`11
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`29.
`
`I was further instructed that in determining whether a claimed invention is
`
`obvious, one must consider the level of ordinary skill in the field of the
`
`invention that someone would have had at the time the claimed invention
`
`was made, the scope and content of the prior art, and any differences
`
`between the prior art and the claimed invention.
`
`30.
`
`In my opinion, a person of ordinary skill in the art in the field of the ’216
`
`Patent would have been an engineer familiar with the design and operation
`
`of software and computer network security systems and basic concepts of
`
`cryptography.
`
`31.
`
`I was further instructed that in considering whether a claimed invention is
`
`obvious, you may find obviousness if you find that at the time of the claimed
`
`invention there was a reason that would have prompted a person having
`
`ordinary skill in the field of the invention to combine the known elements in
`
`a way the claimed invention does, taking into account such factors as (1)
`
`whether the claimed invention was merely the predictable result of using
`
`prior art elements according to their known functions; (2) whether the
`
`claimed invention provides an obvious solution to a known problem in the
`
`relevant field; (3) whether the prior art teaches or suggests the desirability of
`
`combining elements claimed in the invention; (4) whether the prior art
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`
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`12
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`Declaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`teaches away from combining elements in the claimed invention; (5)
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`whether it would have been obvious to try the combinations of elements,
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`such as when there is a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions; and (6)
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`whether the change resulted more from design incentives or other market
`
`forces. To find it rendered the invention obvious, you must find that the prior
`
`art provided a reasonable expectation of success.
`
`32. The context or background in which the’216 Patent was filed is described in
`
`the background section of that patent.
`
`33.
`
`I have reviewed a number of prior-art references that are pertinent to claim
`
`19 of the ’216 patent.
`
`34. The technique of comparing the results of cryptographic functions on both a
`
`local and remote device has been applied to the problem of software
`
`authorization at least as early as 1983. One such example is U.S. Patent No.
`
`4,658,093 to Hellman (“Hellman”), which issued on April 14, 1987.
`
`35. Hellman discloses or suggests each and every limitation of claim 19 of the
`
`’216 Patent, except for the specific generation of “licensee unique IDs,”
`
`because no information specific to the user is entered into the cryptographic
`
`functions of Hellman. The use of such information is taught in Fig.1: “Base
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`13
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`unit 12 generates and communicates to authorization and billing unit 13 a
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`signal representing a user originated request for software use. This request
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`consists of several parts SOFTWARE NAME, SERIAL NUMBER, N, R,
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`and BILLING INFORMATION.” Ex. 1004, 5:60-65.
`
`36.
`
`It would have been obvious to one of ordinary skill in the art to combine the
`
`claims of Hellman and the Fig.1 description. According to the Supreme
`
`Court decision in Uniloc vs. Microsoft, the use of a SERIAL NUMBER is
`
`sufficient to satisfy the criteria for “licensee unique ID.”
`
`37. Hellman would have been considered analogous art to the ’216 Patent.
`
`Hellman addresses the problem of limiting the use of software in accordance
`
`with a user’s license. This problem is solved by generating a unique
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`authorization signal both locally and remotely. Full use of software is
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`allowed only if the local and remote authorization signals match. Because
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`the authorization signals are derived from the same inputs, the same
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`algorithm must be used on both the local and remote side.
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`38. Hellman also teaches that user information, such as billing information, can
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`be collected during the authorization process.
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`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`39. Hellman further teaches that a random number generator can be used to
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`create a unique authorization signal which functions the same way as
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`“licensee unique ID of claim 19.” Although personal user information is not
`
`used as an input, Hellman’s system would work the same way if personal
`
`information were used to generate the authorization signal. It has been
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`previously shown in the art that personal information, such as an SSN, can
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`be used in pseudo-random number generation. Ex. 1009, page 437.
`
`40. U.S. Patent No. 5,103,476 (Waite) teaches using specific user identification
`
`data to generate a “licensee unique ID.”
`
`41.
`
`It would have been obvious to one of ordinary skill in the art to combine the
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`teachings of Waite with the system of Hellman, because combining the use
`
`of specific user-identification data in the licensing algorithm of Waite with
`
`the system of Hellman would have produced predictable results—a software
`
`activation that is both computer- and user-specific. Waite lists Hellman as a
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`cited reference.
`
`42. Waite would have been considered analogous art to the ’216 Patent. The
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`problem addressed in Waite is the same as the ’216 Patent and Hellman—
`
`controlling access to the full version of software in accordance with a user’s
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`license. The solution Waite discloses includes the use of personal
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`information as part of the authorization process. This personal information is
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`included as an input in the algorithm that authorizes full use of licensed
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`software.
`
`43. Moreover, a continuation-in-part of Waite—WO 1992/009160—is discussed
`
`in detail within the ’216 Patent specification. Ex. 1002, 1: 29-56. In
`
`particular, the specification states that “the shell program which the
`
`intending licensee initially executes requires a unique identity embodied
`
`within the shell prior to distribution of the shell program.” Id. at 1:37-39.
`
`The specification goes on to state that Waite “appears to require and indeed,
`
`rely on, encryption to ensure that the program material which is
`
`communicated from a remote location is not intercepted for utilization in an
`
`unauthorized manner.” Id. at 1:47-51. The noted problem of Waite, however,
`
`is its inability to prevent piracy after the initial registration, particularly
`
`when the program is copied from one computer to another. Id. at 1:52-56.
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`Hellman, which discloses a software distribution system that uses encryption
`
`and executes each time the software is run, addresses the noted problem of
`
`Waite. Therefore, a combination of Hellman and Waite would have been
`
`obvious.
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`44. By the 1980s, using a shared random number between the base and remote
`
`units, like that disclosed in Hellman, was also being applied to the problem
`
`of user terminal authentication of remote computers to a central or
`
`mainframe computer. Once such example is U.S. Patent No. 4,779,224 to
`
`Moseley, et al. (“Moseley”), which issued on Oct. 18, 1988.
`
`45. Moseley discloses or suggests each and every limitation of claim 19 of
`
`the’216 Patent, except for the specific generation of “license unique IDs,”
`
`because Moseley's unique ID is not derived from at least a piece of
`
`information that is specific to the user, such as name, billing information, or
`
`product information unique to the instantiation entered by the user.
`
`46. Moseley would have been considered analogous art to the ’216 Patent.
`
`Moseley addressed the problem of verifying the identity of a user terminal
`
`when connecting to a central computer. Where only a password was
`
`required, an unauthorized user could simply learn the password. Moseley
`
`solved the problem by adding verifying units to the user terminal and central
`
`computer.
`
`47. Moseley further teaches that the central computer verifying unit could
`
`generate a random number and send it to the user terminal verify unit. Both
`
`verifying units would run identical algorithms using the random number as
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`an input. The results of the algorithms would then be compared. If they
`
`matched, the connection between the user terminal and central computer
`
`would be established.
`
`48. U.S. Patent 5,023,907 (Johnson) teaches using “information relating to the
`
`user” before granting access to a software program.
`
`49.
`
`It would have been obvious to one of ordinary skill in the art to combine the
`
`teachings of Johnson with the system of Moseley, because Johnson discloses
`
`a more flexible network licensing method that builds on the “single-CPU”
`
`type of authentication disclosed by Moseley. Ex. 1006, 1:16-20.
`
`50. Moreover, because software licensing systems often borrowed from
`
`solutions to the analogous problem of user authentication in computer
`
`network systems, it would have been obvious to use “information relating to
`
`the user” of Johnson as an input to the identical mathematical algorithms of
`
`Moseley, as well as to combine the verifying unit of Moseley with the NLS
`
`lock of Johnson to produce a network licensing system with all of the
`
`elements and limitations recited in claim 19 of the ’216 Patent. One of skill
`
`in the art would have been motivated to make such a combination because it
`
`would have solved the problem noted in the specification of the ’216 Patent
`
`of allowing the software to be run on different computers. Ex. 1002, 2:8-10.
`
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`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
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`51. Johnson would have been considered analogous art to the ’216 Patent.
`
`Johnson recognized that the two main types of software licensing—“single
`
`CPU” and “site licenses”—did not fit the needs of every licensee. Johnson
`
`devised a licensing approach where select individuals at a site, who were not
`
`restricted to a particular CPU, could obtain a license.
`
`52. Johnson accomplishes the task of user specific licensing by requiring that a
`
`user enter “information relating to the user,” and that the information be
`
`verified by a remote server, before software could be used.
`
`53.
`
`In my opinion, claim 19 of the ’216 Patent would have been obvious to one
`
`of skill in the art because analogous prior art teaches or suggests all the
`
`claim’s limitations. The analogous art discussed above addresses the same
`
`problems as the ’216 Patent and solves those problems using the elements
`
`found in claim 19. Nothing about claim 19 leads to unexpected results or
`
`improvement over the prior art. The prior art does not discourage the
`
`arrangement of elements found in claim 19. To the contrary, claim 19
`
`follows the well-known principle that a computer user’s personal
`
`information may be encrypted before transmission to a remote computer for
`
`enhanced security or a hash of that information may be used for transmission
`
`and further comparison to avoid unnecessary exposure. Moreover, when
`
`
`
`19
`
`Kaspersky Lab, Inc. - Ex. 1003
`Page 019of 20
`
`
`
`peclaration of Expert Witness Alexandre Antonov
`in Support of Petition for Inter Partes Review of U.S. Patent No. 5,490,216
`
`comparing hash values created by two computers, one would naturally use
`
`the same algorithm. Thus, claim 19's limitations do not distinguish it over
`
`the prior art" as understood by those of skill in the art.
`
`I, Alexandre Antonov, do hereby declare and state, that all statements made herein
`
`,, of my owrl knowledge are true and that all statements made on information and
`
`belief are believed to be true; and funher thatthese statements were made with the
`,/
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, orboth, under Section 1001 of Title 18 ofthe United States
`
`Code.
`
`Alexandre Antonov
`
`*/*nDate
`
`20
`
`Kaspersky Lab, Inc. - Ex. 1003
`Page 020of 20
`
`
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