UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PERFECT WORLD ENTERTAINMENT INC.
`
`Petitioners
`
`V.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`Case No.
`
`Patent 5,4902 1 6
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`Petitioners Ex. 1007 Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PERFECT WORLD ENTERTAINMENT INC.
`
`Petitioners
`
`V.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`Case No.
`
`Patent 5,4902 1 6
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`Petitioners Ex. 1007 Page 1
`
`
`
`I, Vijay K. Madisetti, hereby declare the following:
`
`I.
`
`BACKGROUND AND EDUCATION
`
`1.
`
`My name is Vijay Madisetti, and I am a Professor of Electrical and
`
`Computer Engineering at Georgia Institute of Technology (“Georgia Tech”) in
`
`Atlanta, GA.
`
`2.
`
`I received a Bachelor of Technology in electronics and Electrical
`
`Communications Engineering from the Indian Institute of Technology (IIT) in
`
`1984.
`
`I received my Ph.D.
`
`in Electrical Engineering and Computer Sciences
`
`(EECS) from the University of California, Berkeley in 1989.
`
`I am currently a
`
`tenured full Professor at Georgia Institute of Technology, and I have been on the
`
`faculty of Georgia Institute of Technology since 1989.
`
`I have authored or co-
`
`authored over 100 reference articles in the area of electrical engineering. 1 have
`
`also authored, co-authored, or edited several books in the areas of electrical
`
`engineering, communications, signal processing, communications, and computer
`
`engineering,
`
`including VLS1 Digital Sigriai Proces.s'ars (1995) and The Digital
`
`Signal Processing Handbook (First & Second Editions) (1998, 2012), and recently,
`
`Cloud Computing (2013). Although I discuss my expert qualifications in more
`
`detail below,
`
`I also attach as [Appendix A| a recent and complete curriculum
`
`vitae, which details my educational and professional background and includes a
`
`listing of most of my publications.
`
`Petitioners Ex. 1007 Page 2
`
`
`
`3.
`
`I have been involved in research and technology in the area of
`
`distributed computer and information systems since the late 1980s, and my work in
`
`this area has focused on secure and efficient distribution of information over
`
`networks,
`
`synchronization of updates
`
`across
`
`a distributed network,
`
`and
`
`multiprocessing systems and tools.
`
`4.
`
`ln 1987, at UC Berkeley,
`
`I worked on implementing a globally
`
`distributed file system, called GAFFES, to facilitate information sharing in a global
`
`network of workstations. GAFFES provided four services to handle naming,
`
`replication and caching, security and authentication, and file access primitives.
`
`GAFFES outlined features of access in terms of users and their roles, and in terms
`
`of beliefs and policies. Every file in GAFFES has at least one role, and the owner
`
`of a role determines the roles that may use that role to operations on software files.
`
`S.
`
`I have authored, co—authored, or edited several books in the past
`
`twenty years, including:
`
`0 VLSI Digital Signal Processors
`
`Madiserfi, V.K.
`
`I Quick-Turnaround ASIC Design in VHDL
`
`Romdhcme, M, Madiseifi, V.K., Hines, J.
`
`0 The Digital Signal Processing Handbook (First Edition)
`
`Madisem',
`
`I/. K, Williams, D. (Editors)
`
`0 VHDL: Electronics Systems Design Methodologies.
`
`Madi.s'em', V. K. (Editor)
`
`0 Platform-Centric Approach to System-on-Chip (SoC)
`
`Design.
`
`Madisem', V. K, Arpnikanondt, A.
`
`Petitioners Ex. 1007 Page 3
`
`
`
`0 The Digital Signal Processing Handbook — Second Edition.
`
`Madisetti,
`
`I/. K. (2009/2010)
`
`0 Cloud Computing: A Hands-On Approach
`A Bahga, V. Madisetti (2013)
`
`6.
`
`1n the past decade 1 have authored several peer-reviewed papers in the
`
`area of computer and software design, and these include:
`
`0 V. Madisetti, et al: “The Georgia tech Digital Signal Multiprocessor,
`IEEE Transactions on Signal Processing, Vol 41, No. 7, July 1993
`
`0 V. Madisetti et al, “Rapid Prototyping on the Georgia Tech Digital
`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol
`42, March 1994.
`
`0 V. Madisetti, “Reengineering legacy embedded systems”, IEEE
`Design & Test of Computers, Vol 16, Vol 2, 1999
`
`0 V. Madisetti et al, “Virtual Prototyping of Embedded Microcontroller-
`based DSP Systems”, IEEE Micro, Vol 15, Issue 5, 1995
`
`0 V. Madisetti, et al, “Incorporating Cost Modeling in Embedded-
`System Design”, IEEE Design & Test of Computers, Vol 14, Issue 3,
`1997
`
`0 V. Madisetti, et al, “Conceptual Prototyping of Scalable Embedded
`DSP Systems”, IEEE Design & Test of Computers, Vol 13, Issue 3,
`1996.
`
`I V. Madisetti, Electronic System, Platform & Package Codesign,”
`1EEE Design & Test of Computers, Vol 23, Issue 3, June 2006.
`
`0 V. Madisetti, et al, “A Dynamic Resource Management and
`Scheduling Enviromnent for Embedded Multimedia and
`Communications Platforms”, IEEE Embedded Systems Letters, Vol 3,
`Issue 1,2011.
`
`7.
`
`1 have over 100 peer-reviewed publications issued from the early
`
`1980s to the present on topics related to computer engineering, computer sciences
`
`and wireless communications and digital system design.
`
`Petitioners Ex. 1007 Page 4
`
`
`
`8.
`
`I am a Fellow of the Institute of Electrical and Electronics
`
`Engineering (“IEEE”), which signifies the highest professional standing in my
`
`research and educational community.
`
`9.
`
`I have already been qualified as an expert in over a dozen trials, and
`
`two recent cases: Harkabi v. SanDisk C0rp., No. 08—cv—8203 (S.D.N.Y.) and
`
`Yangaroo Inc.
`
`v. De.m'ny Media Techs. Inc, No. 09-cv-462 (E.D. Wisc.) the
`
`technology at
`
`issue was specific to the area of digital rights management of
`
`software products. I testified in both of these cases at trial (Harkabi V. SanDisk)
`
`and by deposition (Yangaroo v. Destiny).
`
`10.
`
`In sum,
`
`1 have over 25 years of experience in research and
`
`development in the areas of computer engineering and electrical engineering as a
`
`professor, researcher and consultant.
`
`1 1.
`
`I have been retained by Ubisoft Inc., Sega of America, Inc.,
`
`Kofax, Inc. and Cambium Learning Group, Inc. and I previously submitted an
`
`expert declaration to offer my independent expert opinion concerning certain
`
`issues raised in the Petition for IPR20l4—0l4S3.
`
`I have also been retained by
`
`Perfect World Entertaimnent Inc. to offer a similar expert opinion for the filing of
`
`another inter parres review challenging the Validity of the ’2 1 6 patent. My
`
`compensation is not based on the substance of the opinions rendered here. As part
`
`of my work in connection with this matter, I have studied U.S. Patent No.
`
`Petitioners Ex. 1007 Page 5
`
`
`
`5,490,216 (“the ‘2 16 patent”), including the respective written descriptions,
`
`figures, claims, in addition to the original file history and subsequent
`
`reexamination proceedings. Moreover, I have reviewed various documents from
`
`the prior litigation proceeding in the U.S. District Court for the District of Rhode
`
`Island, Um'Zoc USA, Inc. et al. v. Microsofi‘ Corp., No. 03—CV0440 (WES) and
`
`subsequent Federal Circuit opinions on appeals. Moreover, I have reviewed the
`
`Petition for Inter Partes Review of the ‘216 patent and also considered at least the
`
`following references:
`
`0 U.S. Patent No. 5,509,070 to Schull, et al., (“Schull”), entitled “Method
`for Encouraging Purchase of Executable and Non—Executab1e Software”
`filed on December 15, 1992 and issued on April 16, 1996 [Exhibit
`10021
`
`0 U.S. Patent No. 5,199,066 to Logan (“Logan”), entitled “Method and
`Apparatus for Protecting Software,” filed on April 18, 1989 and issued
`on March 30, 1993 [Exhibit 1003|
`
`0 U.S. Patent No. 5,291,598 to Grundy, (“Grundy”), entitled “Method and
`System for Decentralized Manufacture of Copy—Controlled Software,”
`filed on April 7, 1992, and issued on March 1, 1994 [Exhibit 1004|
`
`I U.S. Patent No. 5,077,660 to Haines, et al., (“Haines”), entitled “Remote
`Meter Configuration,” filed on March 23, 1989, and issued on December
`31, 1991 [Exhibit 1005]
`
`I U.S. Patent No. 5,956,505 to Manduley (“Manduley”), entitled “Remote
`Activation of Software Features in a Data Processing Device,” filed on
`December 24, 1991, and issued on September 21, 1999 [Exhibit 1006]
`
`Petitioners Ex. 1007 Page 6
`
`
`
`0 Claim Construction Order entered in Uniloc USA,
`
`Inc. and Uniloc
`
`Singapore Private Ltd, v. Microsoft Corp., Case No.
`WY—DLM (Aug. 22, 2006 D. R.I.) [Exhibit 1008]
`
`l:O3-cv-0O440-
`
`0 Federal Circuit Opinion, dated Aug. 7, 2008, entered in Uniloc USA, Inc.
`and Uriiloc Singapore Private Ltal, v. Microsofi‘ Carp. [Exhibit 1009]
`
`0 Federal Circuit Opinion, dated January 4, 2011, entered in Uriiloc USA,
`Inc. and Uriiioc Singapore Private Ltd, v. Microsofi‘ Corp.
`|Exhibit
`1010]
`
`0 Australian Provisional No. PL4842,
`(“Parent 4842”) |Exhibit 1025|
`
`filed September 21,
`
`1992
`
`0 Australian Provisional No. PL5524, filed October 26, 1992 (“Parent
`5524”) [Exhibit 1026]
`
`II.
`
`OPINION
`
`A.
`
`Level of a Person Having 0rdina1_‘y Skill in the Art
`
`12.
`
`1t is my understanding that Patent Owner has previously identified,
`
`and the Petitioners are presently suggesting, that the level of a person having
`
`ordinary skill in the art as having a Bachelor’s Degree or equivalent, in Electrical
`
`Engineering or Computer Science, or one to two years of experience in software
`
`development or the equivalent work experience. I have no reason to disagree with
`
`this suggested level of ordinary skill in the art. Based on my education, training,
`
`and professional experience in the field of the claimed invention, I am familiar
`
`with the level and abilities of a person of ordinary skill in the art at the time of the
`
`claimed invention. Additionally, I was a person having ordinary skill in the art as
`
`Petitioners Ex. 1007 Page 7
`
`
`
`of the filing date of the ‘216 Patent and as of the filing dates of the two Australian
`
`patent applications to which the ‘2l6 Patent claims priority.
`
`B.
`
`Baclgground of Software Registration & Activation
`
`13.
`
`Software authorization and licensing systems have been of interest,
`
`and available, to the industry at least since the early 1980s. Appendix B, Suhler, er
`
`.91., IEEE Software (1986). This availability and use increased significantly with
`
`the wider use of sofiware by end—users. Suhler at p. 34. As use and distribution of
`
`software increased, however,
`
`it became apparent
`
`that
`
`there were problems
`
`associated with the increased use — an increase in unauthorized use, or pirates.
`
`Suhler at 34. As a result, the industry became more interested in methods of
`
`preventing unregistered sales
`
`and unauthorized use
`
`through the use of
`
`authorization and licensing technologies. Suhler at 35.
`
`14.
`
`ln order for such technologies to be viable, however, software
`
`designers had to take into account cost and compatibility with existing programs
`
`and operating systems, including those that are not otherwise protected and those
`
`that are protected. Suhler at 35. Taking these concerns to mind, some of the initial
`
`technologies included hardware devices, such as dongles.
`
`15.
`
`For example, in 1980, Business Professional Industrial protected its
`
`accounting software with a hardware security device that was inserted into a game
`
`paddle port. Suhler at 35. Sensor—Based System also used the hardware approach
`
`Petitioners Ex. 1007 Page 8
`
`
`
`by requiring the installation of a PROM chip in the system. Suhler at 35. The
`
`major drawbacks of these systems were cost, portability,
`
`inconvenience and
`
`durability.
`
`16.
`
`From the hardware devices mentioned above, the focus of software
`
`authorization shifted to preventing unauthorized copying and prevention of
`
`unauthorized execution of software products. Techniques developed to address
`
`this new focus include copy protection, validation and encryption. Suhler at 35-36.
`
`However these all have their own advantages and disadvantages, as described
`
`below:
`
`Comparision of authorization techniques.
`
`
`Table 1.
`
`Technique
`Advantages
`Disadvantages
`
`
`Copy protection No additional hardware
`Can be totally transparent
`
`Can be defeated with bit-copy
`program or debugger
`
`Validation
`
`Medium security
`Relatively inexpensive
`
`.
`
`Can be defeated by patching out
`validation code
`
`Usually requires additional
`hardware
`
`Requires execution time overhead
`
`Encryption
`
`Potentially highest security Usually requires additional
`hardware
`
`May require complex distribution
`system for keys
`
`Can require long execution times
`
`17.
`
`The ‘216 Patent
`
`focuses on the validation approach in which
`
`protected software checks the right of the user to execute or operate the software.
`
`Petitioners Ex. 1007 Page 9
`
`
`
`Systems using the Validation approach typically look for a unique key in the
`
`system, and if it is not found, the program assumes that the software is on an
`
`unlicensed machine and execution is aborted. Suhler at 36. If the key is found, the
`
`program continues to execute.
`
`18.
`
`A related validation method is customer—based Validation. An
`
`example of this is found in the case of the “Computerized Gradebook.” Appendix
`
`C, Bryon K. Ehlmarm, “Designing Software to be Used Up and Protecting it From
`
`Pirates,” ACM SIGSMALL/PC Notes, vol.
`
`11,
`
`iss.
`
`3
`
`(Aug.
`
`1985). The
`
`Computerized Gradebook utilizes
`
`a “software-based software authorization
`
`system,” also referred to as a “customer validation procedure.” Ehlmamz at 10. A
`
`teacher using the Computerized Gradebook may use the software a number of
`
`times without obtaining authorization. Ehlmamz at 10, 14. However, in order to
`
`obtain mu rights to the software, the teacher must obtain a password from the
`
`Vendor. The teacher does so by either calling or mailing a twelve—digit number
`
`displayed on the sofiware front screen. Ehlmarm at 10, 11. The twelVe—digit
`
`number is made up of: (1) a six—digit number unique to that piece of software (i.e.,
`
`serial number), (2) a two—digit number based on the number of classes recorded in
`
`the gradebook, and (3) a four—digit number that characterizes how the gradebook
`
`has been used up to that time. Ehlmarm at 11, 12, 13-14. Thus, this number is
`
`unique to the sofiware and to the user. From this number, the vendor generates a
`
`10
`
`Petitioners Ex. 1007 Page 10
`
`
`
`password and transmits it, orally or physically, to the teacher. Ehlmcmn at 12, 14.
`
`The teacher then enters the password and the software validates the password
`
`“based on the same computation used by the vendor. Ehlmarm at 14. Once
`
`validated, the Computerized Gradebook is available for further use.
`
`C.
`
`Software Registration and Activation According to the Asserted
`Patent
`
`19.
`
`In the background of the asserted patent, the Applicant describes a
`
`number of software registration systems. Specifically, the Applicant noted systems
`
`that require a user to input a vendor—assigned unique number at
`
`the time of
`
`installation. Ex. 1001, ‘216 Patent at 1:11-19. The Applicant noted systems where
`
`an intending licensee is initially given only a shell program and must obtain
`
`essential portions of the program from a remote location upon payment of the
`
`registration fee. Id. at 1:29-56. The Applicant also noted two patents (U.S. Patent
`
`Nos. 4,796,220 and 4,688,169_) describing registration systems that uniquely
`
`recognize the platform upon which the software is to be run, and only allow the
`
`software to run if the platform is registered.
`
`20.
`
`The software registration system described in the ‘2l6 Patent is based
`
`on a few simple concepts. First, a registration number is generated on a user’s PC
`
`from information input by the user or provided by the software vendor using a
`
`registration algorithm.
`
`‘2I6 Patem‘ at 2265-32, 3:18-21. Second, using the same
`
`11
`
`Petitioners Ex. 1007 Page 11
`
`
`
`inputs and same registration algorithm, another registration number is generated at
`
`a remote registration authority and provided to the user.
`
`‘2I6 Parent at 3:3—9.
`
`Finally, these two registration numbers are compared at the user’s computer and if
`
`the two numbers match, the protected sofiware is allowed to run in a fully-enabled
`
`mode.
`
`‘21 6 Patent at 7:38-46.
`
`III.
`
`PRIORITY
`
`21.
`
`1 was asked to consider whether claims 1-11 and 17-20 of the ‘2l6
`
`Patent are supported by Australian Provisional No. PL4842, filed September 21,
`
`1992 (Ex. 1025, “Parent 4842”) and Australian Provisional No. PL5524, filed
`
`October 26, 1992 (EX. 1026, “Parent 5524”), to which the ‘216 Patent claims
`
`priority.
`
`22.
`
`It is my understanding that in order for a patent to claim priority to a
`
`prior application, the specification of the earlier—filed application must provide an
`
`adequate written description of the invention claimed in the later—filed application
`
`and provide an enabling disclosure of that claimed invention.
`
`23.
`
`In my opinion, claims 1-11 and 17-20 of the ‘2l6 Patent are not
`
`supported by either Parent 4842 or Parent 5524. Specifically, 1 do not see any
`
`description of structure in Parent 4842 or Parent 5524 for performing the functions
`
`of the “licensee unique ID generating means” or “mode switching means.”
`
`12
`
`Petitioners Ex. 1007 Page 12
`
`
`
`24.
`
`It
`
`is my understanding that
`
`the District Court construed the term
`
`“licensee unique ID generating means” to include the structures of a “summation
`
`algorithm or a summer.” Looking to Parent 4842 and Parent 5524, I do not see a
`
`disclosure of any structure for the “licensee unique ID generating means” claimed
`
`in the ‘216 patent, whether through an algorithm, flowchart or hardware. More
`
`specifically,
`
`there is no description whatsoever of a summation algorithm
`
`(software) or summer (hardware). Rather, there is only a vague reference to a
`
`“registration number algorithm,” which is not described in any detail other than to
`
`say that pieces of information are “combined.” 4842 Parent at 3; 5524 Parent at 2;
`
`also 4842 Parent at 6; 5524 Parem‘ at 6. This is purely a fimctional description
`
`that does not provide any guidance as to its structure, such as how to perform the
`
`function. One of ordinary skill in the art would not understand the meaning of the
`
`term “registration number algorithm” in View of this particularly Vague description,
`
`as there were multitudes of ways to “combine” information in 1992.
`
`25. The ‘2l6 Patent includes disclosures at 1:29-3:64, 4:49-62, 5:30-6:25,
`
`and 9:53-13:52 and Figures 5-10 that are not present in the Parent 4842 or Parent
`
`5524. The portions of the ‘216 patent specification that disclose a summation
`
`algorithm and summer, such as the embodiments described at 11:53-56, 12:62-65,
`
`and Fig. 10, are not present in either the Parent 4842 or the Parent 5524.
`
`I3
`
`Petitioners Ex. 1007 Page 13
`
`
`
`26.
`
`It is also my understanding that the District Court construed the term
`
`“mode switching means” to include the structures of code that performs a
`
`comparison of two numbers or a comparator. The Parent 4842 and Parent S524
`
`similarly do not disclose any structure for the “mode switching means” claim
`
`limitations in the ‘216 Patent, such as through an algorithm for performing a
`
`comparison (software) or a comparator (hardware).
`
`27. The portions of the ‘216 Patent that disclose a hardware comparator
`
`and code for performing a comparison, such as the embodiments described at 6:12-
`
`14 and 13:37-40, and Fig. 10, are not present in the Parent 4842 or Parent 5524.
`
`IV.
`
`INVALIDITY UNDER 35 U.S.C.
`
`103
`
`A.
`
`Legal Framework
`
`28.
`
`I understand that a patent claim is not patentable under 35 U.S.C. § 103
`
`if the differences between the patent claim and the prior art are such that the
`
`claimed subject matter as a whole would have been obvious at the time the claimed
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. Obviousness, as I understand it, is based on the scope and content
`
`of the prior art, the differences between the prior art and the claim, the level of
`
`ordinary skill in the art, and, to the extent that they exist and have an appropriate
`
`nexus to the claimed invention (as opposed to prior art features), secondary indicia
`
`of non—obviousness.
`
`14
`
`Petitioners Ex. 1007 Page 14
`
`
`
`29.
`
`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of
`
`a person of ordinary skill in the art at the time of the invention. As such, my
`
`opinions below as to a person of ordinary skill in the art are as of the time of the
`
`invention, even if not expressly stated as such; for example, even if stated in the
`
`present tense.
`
`30.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if
`
`any, of such differences on the obviousness or non-obviousness of the invention as
`
`a whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`31. An invention is obvious if a person of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the applicant. When there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, it would be obvious to a person of ordinary skill to try the
`
`known options. If a technique has been used to improve one device, and a person
`
`of ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique would have been obvious.
`
`I5
`
`Petitioners Ex. 1007 Page 15
`
`
`
`32.
`
`It is my understanding that a precise teaching in the prior art directed
`
`to the subject matter of the claimed invention is not needed and that one may take
`
`into account the inferences and creative steps that a person of ordinary skill in the
`
`art would have employed in reviewing the prior art at the time of the invention.
`
`For example, if the claimed invention combined elements known in the prior art
`
`and the combination yielded results that were predictable to a person of ordinary
`
`skill in the art at the time of the invention, then this evidence would make it more
`
`likely that the claim was obvious. On the other hand, if the combination of known
`
`elements yielded unexpected or unpredictable results, or if the prior art teaches
`
`away from combining the known elements, then this evidence would make it more
`
`likely that the claim that successfully combined those elements was not obvious.
`
`33.
`
`I understand that hindsight must not be used when comparing the prior
`
`art to the invention for obviousness.
`
`34.
`
`It
`
`is my understanding that obviousness may also be shown by
`
`demonstrating that it would have been obvious to modify what is taught in a single
`
`piece of prior art to create the subject matter of the patent claim. Obviousness may
`
`be shown by showing that it would have been obvious to combine the teachings of
`
`more than one item of prior art.
`
`In determining whether a piece of prior art could
`
`have been combined with other prior art or combined with or modified in view of
`
`16
`
`Petitioners Ex. 1007 Page 16
`
`
`
`other information within the knowledge of one of ordinaiy skill in the art, the
`
`following are examples of approaches and rationales that may be considered:
`
`I
`
`0
`
`0
`
`0
`
`0
`
`Combining prior art elements according to known methods to yield
`
`predictable results;
`
`Simple substitution of one known element
`
`for another to obtain
`
`predictable results;
`
`Use of a known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`Applying a technique or approach that would have been "obvious to
`
`try" (choosing from a finite number of identified, predictable solutions,
`
`with a reasonable expectation of success);
`
`0
`
`Known work in one field of endeavor may prompt Variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations would have been
`
`predictable to one of ordinary skill in the art; or
`
`0
`
`Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art
`
`reference teachings to arrive at
`
`the claimed
`
`invention.
`
`35.
`
`I understand that
`
`the rationale for modifying a reference and/or
`
`combining references may come from sources such as explicit statements in the
`
`prior art, or the knowledge of one of ordinary skill in the art, including any need or
`
`I?
`
`Petitioners Ex. 1007 Page 17
`
`
`
`problem known in the field at the time, even if different from the specific need or
`
`problem addressed by the inventor of the patent claim.
`
`36.
`
`I understand that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider "secondary
`
`considerations" if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness.
`
`In that context,
`
`the patentee argues an
`
`invention would not have been obvious in view of these considerations, which
`
`include: (a) commercial success of a product due to the merits of the claimed
`
`invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of
`
`others to find the solution provided by the claimed invention;
`
`(cl) deliberate
`
`copying of the invention by others;
`
`(e) unexpected results achieved by the
`
`invention; (f) praise of the invention by others skilled in the art; (g) lack of
`
`independent simultaneous invention within a comparatively short space of time;
`
`(h) teaching away from the invention in the prior art.
`
`37.
`
`I further understand that secondary considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be to prior art features. The
`
`establishment of a nexus is a question of fact.
`
`18
`
`Petitioners Ex. 1007 Page 18
`
`
`
`B.
`
`Operating Systems
`
`38.
`
`I note that claims 10 and 11 require the presence of a “computer
`
`9']
`operating system environment. While some of the references do not expressly
`
`disclose the particular architecture of the personal or traditional computers on
`
`which their programs operate,
`
`the presence of an “operating system” in such
`
`contexts is required and, therefore, implicitly present. This is true because, by
`
`1993, and even prior to that time, operating systems for personal computers had
`
`become ubiquitous and necessary to the operation of software on the computer.
`
`For example, in April 1992, Microsoft released Windows 3.1. Even earlier, Apple
`
`released the predecessor to Mac OS (referred to as “System Sofiware” in early
`
`versions) in 1984 (with System 7 being released in 1991) and the LINUX operating
`
`system was released in 1991.
`
`Indeed, the ‘2l6 Patent itself identifies multiple
`
`operating systems available at the time, such as Microsoft DOS, IBM OS/2 and
`
`Macintosh System 7. Ex. 1001,
`
`‘216 Patent at 2:32-36. While these are only a
`
`few of the operating systems available at the time, it is clear that operating systems
`
`for traditional personal computers were almost universally being used by 1993 and
`
`that any program running on a computer,
`
`including those described in the
`
`references, would be adapted to run under that operating system or
`
`in that
`
`environment. Therefore,
`
`the presence of an “operating system” in Schull,
`
`in
`
`particular, is implicitly, if not expressly, present. In the event that these limitations
`
`I9
`
`Petitioners Ex. 1007 Page 19
`
`
`
`are not implicit in Schull, it would have been obvious to use the software on a
`
`computer having an operating system for the reasons stated above.
`
`C.
`
`Schull
`
`39.
`
`I was asked to consider two discrete issues with respect to Schull, in
`
`addition to that discussed in the previous section. The first
`
`is related to the
`
`assignment of Program IDs in Schull. Schull first describes that a programmer may
`
`assign an “adequately unique” Program ID to “each item of protected software.”
`
`EX. 1002, Schull at 7:16-21. Schull further describes that a programmer can use a
`
`random number generator to assign a value for the Program and Feature IDs.
`
`Schull at 7:50-56. Schull also describes that Feature IDs can be assigned by a
`
`central computer that maintains a list of previously assigned IDs. Schulf at 7:56-
`
`59. Because the Feature IDs and Program IDs are discussed together in this
`
`section of Schull entitled, “Method of assigning Feature-lDs and Program IDs,” it
`
`is my opinion that the central computer’s function of assigning Feature IDs would
`
`be equally applicable to Program IDs, ie, the central computer could also assign
`
`unpredictable Program IDs in the same manner as it does Feature IDs.
`
`40. The second issue I was asked to consider is whether Schull discloses
`
`an algorithm for generating a Passwordable ID that falls within the construction of
`
`a “licensee unique ID generating means.”
`
`In other words,
`
`is the algorithm
`
`20
`
`Petitioners Ex. 1007 Page 20
`
`
`
`described in Schull for generating a Passwordable ID a “summation algorithm or
`
`equivalent thereof’? It is my opinion that it is.
`
`41.
`
`Schull describes a password—generating algorithm that concatenates a
`
`Program ID, Feature ID and Target—ID to produce a Passwordable ID, which is
`
`number having N+M+T digits. Schull at 7:16-27.
`
`(1 would like to note that Schull
`
`appears to have a typo in this section. Specifically, Schull refers to a Program ID,
`
`Feature ID and Target-1D as having P-digits, F-digits and T-digits, respectively
`
`(Schull at 7:19-21), but later refers to N, M and T digits (Schull at 7:25). As one of
`
`ordinary skill in the art reading this passage, I understand N and M to be equivalent
`
`to P and F,
`
`respectively.).
`
`As discussed further below,
`
`in my opinion,
`
`concatenation of these three numbers constitutes a summation algorithm or an
`
`equivalent thereof.
`
`42.
`
`Specifically, most programming languages include the concepts of
`
`“integers”
`
`(i.e., numbers)
`
`and “strings”
`
`(i.e.,
`
`a
`
`sequence of characters).
`
`Concatenation is
`
`the operation of joining two strings end—to—end. The “+”
`
`(addition) operator in many programming languages, such as Visual Basic, Python
`
`and Pascal, denotes concatenation. As of 1992, concatenation of three integers, for
`
`example, could be performed in a variety of ways, but essentially boils down to
`
`two basic approaches: (1) multiplying the first integer and second integer by a
`
`power of ten (dependent on the number of digits of the subsequent numbers) and
`
`21
`
`Petitioners Ex. 1007 Page 21
`
`
`
`adding the three integers together, or (2) converting the integers to “strings,”
`
`concatenating the strings, and converting the result back to an integer. Each of
`
`these programmatic approaches will provide the same result.
`
`43. However, there is an advantage to using the summation approach (1) —
`
`speed. Because it
`
`is a matter of performing basic calculations and processing
`
`smaller numbers, as opposed to converting, combining and reconverting large
`
`strings, the summation approach (1) is computationally quicker.
`
`44. Using Schull as an example, numbers X, Y and Z (corresponding to the
`
`Program ID, Feature ID and Target ID) having N, M and T digits, respectively, are
`
`concatenated using the summation approach (1) by performing the following
`
`operation: X*1O‘M+T} + Y*l0T + Z.
`
`In this example, assuming that X = 1234, Y =
`
`56 and Z = 789. Thus, the algorithm would perform the following calculation:
`
`1234*10-" + 56*103 + 789 : 123456789. This is nothing more than multiplication
`
`and addition. As recognized by Uniloc’s expert in the litigation, multiplication is
`
`“nothing more than addition done over and over again.” EX. 1010, Fed. Cir.
`
`Decision dated Jan. 4, 2011, at 17 (quoting Klausner declaration). Put another
`
`way, this form of concatenation is little more than left shifting, i.e., multiplication,
`
`the original numbers the appropriate number of digits and adding those values.
`
`45. Using approach (2) — combining 1234, 56 and 789 into a string — the
`
`final result is also 123456789.
`
`22
`
`Petitioners Ex. 1007 Page 22
`
`
`
`46. As discussed in the Petition, it is my understanding that a “summation
`
`algorithm or equivalent” is not
`
`limited to simple addition, although the
`
`concatenation described above is close to that. At the very least, the concatenation
`
`described above uses addition to perform the function of generating a
`
`Passwordable ID. The use of addition in this form of concatenation is at least as
`
`important as the use of addition in MD5, which was found to be an equivalent
`
`structure to a “summation algorithm.” Ex. 1010, Fed. Cir. Decision dared Jan. 4,
`
`2011, at 21.
`
`47. Therefore, it is my opinion, that concatenation in the context of Schull,
`
`and as described above,
`
`is a summation algorithm or equivalent because it
`
`prominently uses addition to perform the function of generating a Passwordable
`
`1D.
`
`48. Moreover, Schull also describes generating a Passwordable ID that
`
`app
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