Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 1 of 61 PageID #: 389
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF M O D E ISUWD
`
`Uniloc USA, Inc. and Uniloc
`Singapore Private Limited,
`
`Plaintiffs,
`
`V.
`
`Microsoft Corporation,
`
`Defendant.
`
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`C.A. NO. 03-440s
`
`DECISION AND ORDER
`
`WILLIAM E. SMITH, United States D i s t r i c t Judge
`Plaintiffs Uniloc USA, Inc . and Uniloc Singapore Private
`Limited (collectively referred to as 'YJnilocw) have filed this
`
`patent
`
`infringement action against Microsoft Corporation
`
`(wMicrosoft") for allegedly infringing Unilocfs United States
`Patent Number 5,490,216 ("the '216 Patentw) . In general terms, the
`'216 Patent provides a system for software registration that is
`
`directed towards reducing the unauthorized use of software by
`
`allowing "digital data ox software to run in a use mode on a
`
`[computer] platform if and only if an appropriate licensing
`
`procedure has been followed." '216 Patent, col. 2, 11. 53-55.
`
`So that the issues in this litigation may be properly framed
`
`before motions f o r summary judgment are filed, the parties have
`
`submitted a joint designation of 24 patent claim terms to be
`
`construed by the Court. See Dkt. Entry No. 133. After extensive
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`briefing, a technical tutorial, and a Markman hearing, see Markman
`
`v. Westview Instruments, Inc., 52 F.3d 9 6 7 (Fed. Cir. 1995)' this
`
`decision provides the Court's construction of the claim terms and
`
`phrases disputed by the parties.
`
`I. Claim Construction Principles
`
`"It is a bedrock principle of patent law that the- claims of a
`
`patent define the invention to which the patentee is entitled the
`
`right to exclude."
`
`~ n n o v a / ~ u r e Water, Ine. v. Safari Water
`
`Filtration Svs., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2 0 0 8 ) .
`
`Patent infringement analysis consists of two steps: first, the
`
`court must determine the correct meaning and scope of the patent
`
`claims; second, the court must compare the correctly construed
`
`claims to the allegedly infringing device.
`
`Plavtex Prods..
`
`Inc. v. Proctor & Gamble Co., 400 F.3d 901, 905-06 (Fed. Cir.
`
`2005).
`
`Claim construction presents a question of law to be
`
`determined by a judge. See Pfizer, Inc. v. Teva Phams. USA, Inc.,
`
`429 F . 3 d 1364, 1373 (Fed. Cir. 2005). In construing claim terms,
`
`district courts are to give claim terms "their ordinary and
`
`customary meaning," which is the meaning the terms "would have to
`
`a person of ordinary skill in the art in question at the time of
`
`the invention." Phillips, 415 F.3d 1303, 1312-13
`{Fed. Cir. 2005) . "In some cases, the ordinary meaning of claim
`
`language as understood by a person of skill i n the art may be
`
`readily apparent even to lay judges, and claim construction in such
`
`2
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`cases involves little more than the application of the widely
`accepted meaning of commonly understood words." - Id. at 1314. On
`such occasions, general purpose dictionaries may assist the court
`
`in ascertaining the correct construction of the claims. Id.
`
`On the other hand, in a situation, where the claim terms are
`
`not so readily susceptible to interpretation, Phillips outlines
`
`what sources the district court may consider and gives guidance as
`
`to how much weight to give a particular source.
`
`First and
`
`foremost, the intrinsic record, which consists of the claims
`
`themselves, the remainder of the specification,' and, where
`
`relevant, the prosecution historyi2 provides the best guidance as
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`to a claim's meaning. Id. at 1313-15. Among the sources of
`
`intrinsic evidence, Phillips places primary importance on the
`
`A patent specification is defined i n 35 U.S.C. § 112 as
`follows :
`
`The specification shall contain a written
`description of the invention, and of the manner and
`process of making and using it, in such full, clear,
`concise, and exact terms as to enable any person skilled
`in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same, and shall set
`forth the best mode contemplated by the inventor of
`carrying out his invention.
`The specification shall conclude with one or more
`claims particularly pointing out and distinctly claiming
`the subject matter which the applicant regards as his
`invention.
`
`The prosecution history "consists of the complete record of
`the proceedings before the PTO [the Patent and Trademark Office]
`and includes the prior art cited during the examination of the
`patent." Phillips at 1317.
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`claims themselves and the specification because the context in
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`which a term is used in the asserted claim and the use of the term
`
`in other claims can be "highly instructive." Id. at 1314. Thus,
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`the specification "is the single best guide to the meaning of a
`
`disputed term." Id. at 1315. Indeed, it is "entirely appropriate
`
`for a court, when conducting claim construction, to rely heavily on
`
`the written description for guidance as to the meaning of the
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`c l a i m s . " Xd. at 1317. Nonetheless, Phillips warned of "the danger
`
`of reading limitations from the specification into the claim." Id.
`
`at 1323.
`
`Tn other words, the Court "must use the written
`
`description for enlightenment and not to read a limitation from the
`
`specification." Plavtex, 400 F . 3 d at 9 0 6 .
`
`Although generally not as useful in construing a claim as the
`
`specification, the court may consider the prosecution history if it
`
`is in evidence. Like the specification, the prosecution history
`
`"can often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention and whether
`
`the inventor limited the invention in the course of prosecution,
`
`making the claim scope narrower than it would otherwise be."
`
`Phillips at 1317; see also Chimie v. PPG Indus., I n c . , 402 F.3d
`
`1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the
`
`prosecution history in construing a claim is to exclude any
`
`interpretation that was disclaimed during prosecution.") (internal
`quotations and citation o m i t t e d ) . Trial courts must r e m e m b e r ,
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`however, that because the prosecution history "represents an
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`ongoing negotiation between t h e PTO and the applicant," it i s less
`
`useful for claim construction purposes. Phillips, 415 F.3d at
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`Additionally, extrinsic evidence, such as dictionaries,
`
`treatises, and expert testimony, may provide guidance in certain
`
`circumstances, but these sources should be used with some degree of
`
`caution. Specifically, technical dictionaries are helpful to the
`
`extent t h a t
`
`they assist a court to "better understand the
`
`underlying technology and the way in which one of s k i l l in the a r t
`might use the claim terms ." Td. at 1318. Expert testimony is also
`valuable for providing background on the technology at issue,
`
`explaining how an invention works, or describing a distinctive use
`
`of a term in a particular field. However, neither dictionaries nor
`
`expert testimony are entirely reliable sources for claim
`
`interpretation for a variety of reasons. Phillips opined, for
`
`example, t h a t expert testimony, which is "generated at the time of
`
`and for the purpose of litigation, *' is "less reliableN than t h e
`
`p a t e n t itself i n defining claim terms. Id. a t 1318. Therefore,
`
`expert testimony should be rejected when it "is clearly at odds
`
`with the claim construction mandated by the claims themselves."
`
`Id. -
`
`Ultimately, there is no magic formula for conducting claim
`
`construction when the ordinary meaning of the disputed terms as
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`understood by a person of skill in the art is not readily apparent.
`-
`Id. at 1324. The Court should concentrate on giving appropriate
`weight to each "source in light of the statutes and policies that
`
`inform patent law." Id. This equates to attaching the most
`
`significance to the claims and the specification, followed by the
`
`prosecution history, and finally by extrinsic sources. Id.
`
`In addition to these general principles, the Court notes that
`under 35 U.S.C. § 112, 7 6, a "means-plus-function" claim requires
`
`a more particular interpretative approach, Specifically, a "means-
`
`plus-function" claim "shall be construed to cover the corresponding
`
`structure, material, or acts described in the specification and
`equivalents thereof ."
`35 U.S.C. S 112, 7 6. This approach
`urestxict [s] a functional claim element s broad literal
`language . . . to those means that are 'equivalenti to the actual
`
`means shown in the patent specification." Al-Site Corp. v. VSI
`
`IntfZ, I n c . , 1 7 4 F.3d 1 3 0 8 , 1320 ( F e d . Cir. 1999). The Federal
`
`Circuit "has established a framework for determining whether the
`
`elements of a claim invoke means-plus-function treatment." Micro
`
`Chem., Inc. v. Great Plains Chem. Co., Inc., 1 9 4 F.3d 1250, 1257
`(Fed. Cir. 1999) . If the word "meansff appears in a claim element
`in association with a function, there i s a presumption that § 112,
`1 6, applies. This presumption collapses, however, if the claim
`
`itself recites sufficient structure, material, or acts to perform
`
`the claimed function. Without t h e term "means, " a claim element is
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`presumed to fall outside means-plus-function strictures. Once
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`again, however, that presumption can collapse when an element
`
`lacking the term "means" nonetheless relies on functional terms
`
`rather than structure or material to describe performance of the
`
`claimed function. Id.
`
`The construction of a means-plus-function claim is a two-step
`
`process: first, the function must be determined; then, the
`
`corresponding structure as described in the specification must be
`
`identified. See JVW Enters., Inc. v. Interact Accessories, Inc.,
`
`424 F.3d 1324, 1330 (Fed. Cir. 2005) . In determining the function,
`
`"[tlhe court must construe the function of a means-plus-function
`
`limitation to include the limitations contained in the claim
`
`language, and only those limitations. It is improper to narrow the
`
`scope of the function beyond the claim language. It is equally
`
`improper to broaden the scope of the claimed function by ignoring
`
`clear limitations in the claim language. Ordinary principles of
`
`claim construction govern interpretation of the claim language used
`
`to describe the function." Cardiac Pacemakers. Inc. v. St. Jude
`
`Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (internal
`
`citations omitted). Turning to the second step, a structure in the
`
`specification is a "corresponding structure" if "the specification
`
`or prosecution history clearly links or associates that structure
`
`to the function recited in the
`
`Medtronic, Inc.. v.
`
`Advanced Cardiovascular Svs.. Inc., 248 F.3d 1303, 1311 (Fed. Cir.
`
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`2001).
`
`Having set forth the guiding claim construction principles,
`
`the Court now turns to the various disputed claim terms in t h i s
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`case as s e t f o r t h by the parties in their j o i n t designation of
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`claim terms to be construed. See Dkt. Entry No. 133.
`
`11. Diswuted Claim Terms
`
`In true gladiatorial spirit reflecting the high stakes in this
`
`fight, the parties manage to disagree on the construction of no
`
`less than 24 claim terms, with the parties battling more vigorously
`
`over the construction of some terms than others. Considering the
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`breadth and number of claim terms to be construed, for ease of
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`discussion, t h i s Court has adopted the structure of Microsof t ' s
`
`claim construction brief and grouped the claim terms into the
`
`following five categories: (1) licensee unique ID and its
`
`generation; (2) modes/mode switching means; (3) user interaction
`
`requirements; ( 4 ) claim 12 and its dependent claims; and (5)
`
`platform unique ID generating means.
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`coutt ' #
`consttuet ion
`
`A unique
`identifier
`associated w i t h
`a licensee
`
`A.
`
`Licensee uniaue ID and its qeneration
`
`Uniloc' s
`proposed
`construcfioa
`
`Microsof t ' s
`proposed
`constzuction
`
`1. Licensee unique
`ID/Secusity key
`
`2. ~egistration key
`
`A unique
`identifier
`associated with
`a licensee
`
`3. Enabling key
`
`A one of a k i n d
`(i.e. unique)
`identifier that
`is entirely the
`product of data
`about the user,
`not the platform,
`generated
`locally, and that
`is not the
`product of e i t h e r
`(1) data added
`be£ ore 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
`
`Initially, t h e Court notes that the parties have not entirely
`
`agreed t h a t these three terms should be construed synonymously. On
`
`June 9, 2006, the parties filed a j o i n t submission in which
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`Microsoft stated the terms were synonymous, while Uniloc took the
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`cautious position that the terms should only be treated
`
`synonymously under Uniloc's proposed construction. Because the
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`Court ultimately does not construe these terms to include the
`
`limitations set forth by Microsoft, these terms are treated
`
`synonymously and references in this decision to the term "licensee
`
`unique ID" should be understood to also include the terms 'security
`
`key," "registration key," and "enabling key."
`
`Uniloc's construction is relatively straightforward, but
`
`attacked by Microsoft as "fatally ambiguous" and "completely
`
`unsupported by anything in either the intrinsic or extrinsic
`
`record." In response, Uniloc argues that Microsoft's construction
`
`improperly attempts to read in a host of limitations and 'transform
`
`these simple two and three-word claim limitations into a 104-word
`
`tongue twister." This energetic first battle highlights three main
`
`points of disagreement: (1) the meaning of unique;
`
`( 2 ) whether the
`
`licensee unique ID m a y be based upon vendor information (such as a
`
`product number provided on the vendor label of a compact disc) ; and
`
`(3) whether the licensee unique ID must be based upon prospective
`
`user information (such as name, address, credit card number), and
`
`not platform information (such as the current time on the computer
`
`system).
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`As the first part of its proposed construction, Microsoft,
`
`relying upon a dictionary definition of the word uunique,w3 takes
`the position that the uniqueness of the identifier must be "one-of -
`The Court finds ,
`
`a-kind," somewhat akin to DNA uniqueness.
`
`however, that this proposed construction is inconsistent with the
`
`language of the '216 Patent itself. The '216 Patent clearly
`
`contemplates that the licensee unique ID will consist of varying
`
`levels of uniqueness that are wholly dependent upon the inputs used
`
`to formulate the licensee unique ID. For example, the '216 Patent
`
`states :
`
`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".
`
`'216 Patent, Abstract. Moreover, the '216 Patent provides:
`
`In any e v e n t , in particular preferred forms, a
`serial number (see further on) is included in the
`registrationnumber generationalgorithm which introduces
`an additional level of uniqueness into the registration
`number calculation process.
`-
`Id. at col. 6, 11. 23-26.
`
`Microsoft relies upon The American Heritage Dictionary of
`the English Language, Fourth Edition which provides in relevant
`part :
`
`unique (adj.) 1. Being the only one of its kind: the
`unique existing example of Donne's handwriting.
`2.
`Without an equal or equivalent; unparalleled.
`3a.
`Characteristic of a particular category, condition, or
`locality: a problem unique to coastal areas. b. Informal
`Unusual; extraordinary: spoke with a unique accent.
`
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`Thus, as Microsoft correctly recognizes in its claim
`
`construction brief, "the '216 patent suggests that 'uniqueJ is a
`
`relative term[.]"
`
`To construe the word unique to mean no
`
`possibility of duplication would simply be inconsistent with the
`
`specification.
`
`2. Vendor and Information
`
`The parties next dispute whether the licensee unique ID may be
`
`derived from vendor information. This dispute arises because
`
`Microsoft's proposed construction is premised upon the argument
`
`that during the prosecution, Uniloc affirmatively and categorically
`
`disclaimed the use of any information from the software vendor to
`
`generate the licensee unique ID.
`
`In resolving this issue, the Court first turns to the language
`
`of the '216 Patent and notes that there is no language in the
`
`claims, or anywhere in the specification for that matter,
`
`prohibiting the use of vendor information to create the licensee
`
`unique ID. To t h e contrary, t h e Court finds language in the
`
`specification supporting the notion that vendor information may
`
`indeed be an input to creating the licensee unique ID. For
`
`instance, figure 4 of the '216 Patent, which is discussed in the
`
`context of the third embodiment, contemplates that a "PRODUCT NO."
`
`may be used in the generation of the registration number.
`
`Moreover, in the sixth embodiment, the '216 Patent provides:
`
`The algorithm, in this embodiment, combines by
`addition the serial number 50 with the software product
`
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`name 64 and customer information 65 and previous user
`identification 22 to provide registration number 6 6 .
`
`'216 Patent, col. 11, 11. 5 3 - 5 6 (emphasis added). The sixth
`
`embodiment a l ~ o references figure 9, which contemplates that a
`
`"PRODUCT NAMEw may be one of the numbers used in the creation of a
`
`registration number.
`
`Finally, the seventh embodiment, which
`
`references figure 10, provides:
`
`Additionally, product information P derived f r o m
`media 82 (typically via platform 83) or else via the
`intermediary of the user (signified by the small man
`symbol) is provided to encoder/decoder 84 and to summer
`8 5 .
`
`Summer 85 acts as a local licensee unique ID
`generating means by combining, by addition, customer
`information C, product information P and serial number S
`in order to provide a Local licensee unique ID here
`designated Y .
`-
`Id. at c o l . 12, 11. 54-57, 61-64 (emphases added) .
`Consideration of the prosecution history does not change this
`
`result. It is well established that " [ t I he prosecution history
`
`limits the interpretation of claim terms so as to exclude any
`
`interpretation that was disclaimed during prosecution." southwall
`
`Techs., Inc. v. Cardinal IG Co., 54 F . 3 d 1570, 1576 (Fed. Cir.
`
`1995). It must also be remembered, however, that the prosecution
`
`history represents a dialogue between the PTO and the inventor and
`
`thus, often lacks the clarity and usefulness of the specification.
`-
`See Philliws, 415 F.3d at 1317. Because of these concerns, and to
`balance the importance of public notice and the right of patentees
`
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`t o seek broad coverage, the Federal Circuit has 'consistently
`
`rejected prosecution statements too vague or ambiguous to qualify
`as a disavowal of claim scope ." O m e q a Enqt q, Inc. v. Raytek Corp.,
`"Consequently, for
`334 F.3d 1314, 1325 (Fed. Cir. 2003).
`
`prosecution disclaimer to attach, [the Federal Circuit] requires
`
`that the alleged disavowing actions or statements made during
`
`prosecution be both clear and unmistakable." Id. at 1325-26.
`
`Microsoft first asserts that applicant disclaimed the use of
`
`vendor information by pointing to the following statements:
`
`It is inherent in the system of the present application,
`as claimed, that the "Licensee Unique ID" is entirely the
`product of data generated locally as distinct from data
`added before delivery of the software to the local
`location for use (thereby distinguishing over Chou) or
`subsequently from a remote location (thereby
`distinguishing over Grundy) .
`The fundamental principles underlying the operation
`of the present invention are simple yet highly effective .
`The uniqueness of identity by which each copy of the
`software to be protected is distinguished from any other
`copy is provided by each and only each new user: to
`reiterate the system does not require the introduction of
`any unique identifiers from any other source, either
`before delivery of the software for use by the intending
`user or subsequent to delivery thereof.
`
`UNILOC 0143 -44. These statements, when considered in context, are
`
`reasonably subject to an interpretation other than the one set
`
`forth by Microsoft.
`
`Microsoft reads these statements to
`
`The prosecution history in this case is attached as Exhibit
`B to the Declaration of David KLausner. Because the parties are
`familiar with the various documents that comprise the prosecution
`history, for ease of reference, the Court will simply cite the
`prosecution history by Bates Number, i.e., "UNILOC xx."
`
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`differentiate local and remote inputs and to disclaim the use of
`
`vendor information.
`
`the statements, however, the applicant
`
`simply reiterated that the system does not require the use of
`
`vendor-supplied in£ ormat ion, not that vendor-supplied information
`
`is banned absolutely. Moreover, the statements in the prosecution
`
`history immediately prior to the cited excerpt could be read to
`
`imply that the references to local and remote actually refer to the
`
`location of where the licensee unique ID is generated, and not the
`
`inputs of the licensee unique ID:
`
`In response, the Applicant submits herewith
`redrafted claims, the main claims of which include,
`broadly, the following two distinguishing limitations:
`(a) The "Licensee Unique IDN on which the
`registration system relies for matching for
`verification purposes is generated locally,
`and
`(b) The algorithm used to generate locally the
`"Licensee Unique ID" is replicated remotely
`for the purposes of remote generation of a
`separate "Licensee Unique ID" for matching
`purposes.
`
`UNILOC 0143. This reading is bolstered by the fact that the PTO
`
`and the applicant appear to have agreed during the prosecution that
`
`the use of vendor information was contemplated. At one point, the
`
`PTO 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 of the authorization
`process.
`
`UNILOC 0135. In response, Uniloc stated:
`
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`
`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, i f true, t h a t Grundy does not teach away from
`providing the information does not therefore mean that
`G m d y teaches that the information is provided or t h a t
`doing so would be obvious.
`
`UNILOC 0146. This exchange, at a minimum, could be read as a tacit
`
`acknowledgment by the PTO and the applicant that the claims of the
`
`'216 Patent allow use of vendor information. When taken in the
`
`full context of the prosecution history, as well as the language in
`
`the specification, the statements cited by Microsoft are not so
`
`clear and unmistakable as to constitute prosecution disclaimer.
`
`3 .
`
`User and Platform Information
`
`Finally, Microsoft a s s e r t s that the specification and
`
`prosecution history show that the licensee unique ID "is based only
`
`on local information about t h e user, rather than information about
`
`the usert s computer i e , platf o m information] . y1
`
`Again, the
`
`Court turns t o the language of the '216 Patent and notes that there
`
`is no language in the claims themselves, or anywhere in the
`
`intrinsic evidence for that matter, stating that user information
`
`is always a necessary input in the generation of a licensee unique
`
`ID. Nor is there any language in the specification implying that
`
`platform information may not be used to generate a licensee unique
`
`ID. To t h e contrary, the Court finds language in the claim terms
`
`as well as the rest of the specification indicating that platform
`
`information may be used in creating the licensee unique ID. For
`
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`instance, the ' 216 Patent provides that platf o m information may be
`
`used to create a serial number, which may then be combined with
`
`user information to create a licensee unique ID:
`
`After selecting "continue", the registration routine
`begins the first step in the generation of a security key
`which will be unique to the current copy of the software
`and to certain features of the environment in which it
`runs.
`As shown in FIG. Zb, the first step in the
`generation of the security key comprises the generation
`of a serial number senerated from the current time on the
`svstem and, in this example, the last modifv date of the
`software and other information from the computer
`environment.
`
`'216 Patent, col. 6, 11. 63-67; c o l . 7 , 11. 1-5 (emphasis added).
`
`Additionally, claims 13 and 14 provide:
`
`1 3 . The registration system of claim 12, wherein said
`security key is generated by a registration number
`algorithm.
`14. 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 senerated from information
`provided bv the environment in which the software to be
`protected is to run.
`
`Sd. at col. 14, 11. 50-56 (emphasis added). The summary of the
`
`invention section of the '216 Patent also contemplates use of
`
`platform information in generating the security key:
`
`Preferably, the security key is generated by a
`registration number algorithm.
`Preferably, the registration number algorithm
`combines information entered by a prospective registered
`user unique to that user with a serial number senerated
`from information provided by the environment in which the
`software to be wrotected is to run ( e . s . , system clock,
`last modify date, user name).
`
`at col. 4, 11. 4-11 (emphasis added).
`
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`The language and structure of the claims also convinces the
`
`Court that Microsoft's proposed construction would violate the
`
`doctrine of claim differentiation. Claim differentiation "refers
`
`to the presumption that an independent claim should not be
`
`construed as requiring a limitation added by a dependent claim."
`
`Curtiss-Wrisht Flow Control Corn. v. Velan, Inc., 438 F.3d 1374,
`(Fed. Cir .
`Holdinqs, PLC, 4 0 3 F.3d 1364, 1370 (Fed. Cir. 2005)). In the '216
`
`(citing Nazomi Commcfns, Inc. v. Arm
`
`Patent, independent claim 1 says nothing about the licensee unique
`
`ID being generated from user information. Claim 1 states in full:
`
`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 includingmode switchingmeans
`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.
`
`'216 Patent, col. 13, 11. 54-67 - col. 14, 1. 1. Dependent claims
`
`2 and 6, which depend from claim I, add limitations to the
`
`algorithm inputs discussed in claim 1. Claim 2 provides:
`
`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
`
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`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 19 of 61 PageID #: 407
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`licensee of said digital data to be executed in said use
`mode.
`
`Id. at col. 14, 11. 2-7. And, claim 6 provides:
`
`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.
`
`Id. at col. 14, 11. 19-23. Thus, construing the term licensee
`
`unique ID as Microsoft suggests - as requiring that a licensee
`
`unique ID always be generated from user information - would simply
`
`render claims 2 and 6 meaningless (or at best, partially redundant)
`
`and violate the doctrine of claim differentiation.
`
`It is true that every embodiment in the '216 Patent
`
`contemplates a licensee unique ID being generated, at least in
`
`part, from user information. But of course, the '216 Patent also
`
`states that the listed embodiments are "only some embodiments of
`
`the present invention and modifications, obvious to those skilled
`
`in the art, can be made thereto without departing from the scope
`col .
`Moreover, the general rule is that "persons of ordinary skill in
`
`and spirit of t h e present invention.
`
`the art rarely would confine their definitions o f terms to the
`
`exact representations depicted in the embodiments." Phillins, 415
`
`Finally, to the extent Microeoft relies o n the prosecution
`
`history to support its position, the Court finds that the
`
`statements cited by Microsoft are not so clear and unmistakable as
`
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`to constitute prosecution disclaimers5 While the statements do
`
`make reference to a licensee unique ID'S uniqueness in relation to
`
`an end user's identification details, the overarching theme of the
`
`statements is not that user information is the only input, or even
`
`a necessary input in generating the licensee unique ID. Rather, it
`
`could be said that the import of these statements is simply t o
`
`In addition to citing that portion of the