Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`In Reexamination of:
`
`U.S. Patent No. 5,490,216
`
`Patent Issue Date:
`
`February 6, 1996
`
`Patent Serial No.:
`
`08/124,718
`
`Patent Filing Date:
`
`September 21, 1993
`
`Applicant:
`Reexamination Control No.:
`
`Examiner:
`
`Art Unit:
`
`For:
`
`Frederic B. Richardson, III
`
`not yet assigned
`
`not yet assigned
`
`not yet assigned
`
`SYSTEM FOR SOFTWARE REGISTRATION
`
`
`
`REQUEST FOR EX PARTE REEXAMINATION OF
`U.S. PATENT NO. 5,490,216
`
`Mail Stop Ex Parte Re—Exam
`Attn: Central Reexamination Unit
`
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA. 22313-1450
`
`Dated: March6 2012
`
`Michael J. Mlotkowski, Esq.
`
`Roberts Mlotkowski Safran & Cole P.C.
`
`7918 Jones Branch Drive
`
`Suite 500
`
`McLean, VA 22102
`
`Customer No. 25570
`
`Petitioners Ex. 1021 Page 1
`
`Petitioners Ex. 1021 Page 1
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`TABLE OF CONTENTS
`
`has
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................................... .. 1
`
`RELATED PROCEEDINGS INVOLVING THE ‘216 PATENT ............................. .. 2
`
`A. Prior Reexamination Proceeding ................................................................................... .. 2
`
`B. Litigation .......................................................................................................................... .. 2
`
`III.
`
`CITATION OF THE PRIOR PATENTS AND PUBLICATIONS ............................ .. 3
`
`IV.
`
`IDENTIFICATION OF CLAIMS FOR WHICH REEXAMINATION IS
`
`REQUESTED .............................................................................................................................. .. 4
`
`V.
`
`OVERVIEW OF THE ‘216 PATENT .......................................................................... .. 5
`
`A. Specification ..................................................................................................................... .. 5
`
`B. Original Prosecution History ....................................................................................... .. 10
`
`C. Prosecution History — Prior Reexamination Proceeding .......................................... .. 12
`
`VI.
`
`OVERVIEW OF APPLICABLE PATENT LAW ..................................................... .. 12
`
`A. Claim Interpretation ..................................................................................................... .. 12
`
`B. Anticipation ................................................................................................................... .. 13
`
`C. Obviousness ................................................................................................................... .. 14
`
`VII.
`
`PERTINENCE OF CARGILE AS A PRIMARY REFERENCE ............................ .. 16
`
`A. Overview of Cargile ...................................................................................................... .. 16
`
`B. Overview of the Pertinence of Cargile to the Claims of the ‘216 Patent ................. .. 18
`
`C. Cargile Discloses the Features Argued by the Applicant During Prosecution to be
`Missing From Grundy .................................................................................................. .. 24
`
`VIII.
`
`PERTINENCE OF WAITE AS A PRIMARY REFERENCE ........................... .. 24
`
`A. Overview of Waite ......................................................................................................... .. 25
`
`B. Overview of the Pertinence of Waite to the Claims of the ‘216 Patent .................... .. 27
`
`C. Waite Discloses the Features Argued by the Applicant During Prosecution to be
`Missing From Grundy .................................................................................................. .. 30
`
`IX.
`
`PERTINENCE OF MOSELEY AS A PRIMARY REFERENCE ........................... .. 30
`
`A. Overview of Moseley ..................................................................................................... .. 30
`
`B. Overview of the Pertinence of Moseley to the Claims of the ‘216 Patent ................ .. 32
`
`C. Moseley Discloses the Features Argued by the Applicant During Prosecution to be
`Missing From Grundy .................................................................................................. .. 34
`
`i
`
`Petitioners Ex. 1021 Page 2
`
`Petitioners Ex. 1021 Page 2
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`X.
`
`STATEMENT IDENTIFYING EACH SUBSTANTIAL NEW QUESTION OF
`
`PATENTABILITY PURSUANT TO 37 C.F.R. § 1.510(B)(1) AND THE APPLICATION
`OF EACH CITED REFERENCE TO THE CLAIMS PURSUANT TO 37 C.F.R. §
`
`1.510(B)(2) .................................................................................................................................. .. 35
`
`A. SNQ #1 — Claims 1, 2, 10, 11, 19, and 20 are Anticipated by Cargile ...................... .. 35
`
`B. SNQ #2 — Claims 1, 2, 10, 11, 19, and 20 are Obvious over Cargile ......................... .. 51
`
`C. SNQ #3 — Claims 1-11, 19, and 20 are Obvious Over Cargile in view of Waite ...... .. 52
`
`D. SNQ #4 — Claims 17 and 18 are Obvious Over Cargile in view of Waite ................ .. 60
`
`E. SNQ #5 — Claims 19 and 20 Are Anticipated by Waite ............................................. .. 66
`
`F. SNQ #6 — Claims 19 and 20 Are Obvious Over Waite in View of Held ................... .. 75
`
`G. SNQ #7 - Claims 1-11 Are Obvious Over Waite ........................................................ .. 75
`
`H. SNQ #8 — Claims 1-11 Are Obvious Over Waite in View of Held ............................ .. 85
`
`I. SNQ #9 — Claims 1, 2, 10, 11, 19, and 20 are Anticipated by Moseley ..................... .. 86
`
`J. SNQ #10 — Claims 1, 2, 10, 11, 19, and 20 are Obvious over Moseley in view of
`Cargile ............................................................................................................................ .. 97
`
`XI.
`
`CONCLUSION ............................................................................................................. .. 98
`
`XII.
`
`LIST OF EXHIBITS ..................................................................................................... .. 99
`
`ii
`
`Petitioners Ex. 1021 Page 3
`
`Petitioners Ex. 1021 Page 3
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`I.
`
`INTRODUCTION
`
`Pursuant to the provisions of 35 U.S.C. §§ 301-307 and 37 C.F.R. §§ 1.510 et seq.,
`
`Requester hereby requests ex parte reexamination of claims 1-11 and 17-20 of U.S. Patent No.
`
`5,490,216 (the “’216 Patent”), which issued on February 6, 1996 to Frederic B. Richardson, III.
`
`On information and belief, the ‘216 Patent is currently assigned to Uniloc Luxembourg, S.A.
`
`(“Uniloc Luxembourg”),1 and is currently in force. As detailed in Section II of this Request, the
`
`‘216 Patent was the subject of a prior reexamination proceeding, and is currently (or has been)
`
`the subject of Various litigation proceedings. In one such litigation proceeding identified below
`
`(Uniloc USA, Inc. V. Sureloc, Inc.), Sureloc, Inc. claims to haVe rights in the ‘216 Patent.
`
`This Request provides the U.S. Patent and Trademark Office (“USPTO”) with an
`
`opportunity to examine at least claims 1-11 and 17-20 of the ‘216 Patent in View of the prior art
`
`patents and printed publications cited herein. In View of the importance of this request and the
`
`strength of the prior art showing, it is respectfully requested that the USPTO carefully reView the
`
`claims of the ‘216 Patent on an expedited basis.
`
`This reexamination request satisfies the requirements of 37 C.F.R. § 1.510(b) as follows:
`
`37 C.F.R. § 1.5101b Q1 1 Q: A statement of each substantial new question of patentability
`
`(“SNQ”) is proVided in Section X of this Request.
`
`37 C.F.R. § 1.510gbgg2g: Reexamination of claims 1-11 and 17-20 of the ‘216 Patent is
`
`requested. Sections VII-IX of this Request proVide a detailed explanation of the pertinence of
`
`the cited prior art references. A detailed explanation of the application of the cited prior art to
`
`each claim limitation is proVided in Section X.
`
`37 C.F.R. § 1.510gb Q13}: This reexamination request is based on the prior art references
`
`identified in Section III of this Request, and attached as Exhibits E-H. The relied-upon prior art
`
`references identified in Section III of the Request are also listed on a Form PTO/SB/08, attached
`
`as Exhibit M.
`
`37 C.F.R. § 1.510gbgg4g: A copy of the ‘216 Patent is attached as Exhibit A. A copy of
`
`the prosecution history of the ‘216 Patent is attached as Exhibit B. Copies of two Australian
`
`priority applications are also attached as Exhibits C and D.
`
`1 Uniloc Luxembourg appears to be the current assignee according to the assignment records publicly-available at
`the U.S. Patent & Trademark Office.
`
`Petitioners Ex. 1021 Page 4
`
`Petitioners Ex. 1021 Page 4
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`37 C.F.R. § 1.510(b)(5): This Request is being served in its entirety on the purported
`
`patent owner (as provided in 37 C.F.R. 1.33(c)) at the official correspondence address in the
`
`records of the U.S. Patent and Trademark Office, as evidenced by the “Certificate of Service
`
`Under 37 C.F.R. § 1.510(b)(5)” provided herewith.
`
`II.
`
`RELATED PROCEEDINGS INVOLVING THE ‘216 PATENT
`
`As previously noted, the ‘216 Patent was the subject of a prior reexamination proceeding,
`
`and is currently (or has been) the subject of various litigation proceedings.
`
`A.
`
`Prior Reexamination Proceeding
`
`The ‘216 Patent was the subject of prior Ex Parte Reexamination Control No.
`
`90/010,831, filed January 22, 2010. An “Ex Parte Reexamination Certificate” was issued on
`
`October 4, 2011 confirming the patentability of claims 1-20 of the ‘216 Patent. No amendments
`
`were made to any of claims 1-20 during this proceeding.
`
`The instant Request relies on prior art references that were not applied in any of the
`
`rejection(s) in the prior proceeding.
`
`B.
`
`Litigation
`
`The ‘216 Patent has additionally been the subject of a number of litigation proceedings.
`
`Requester has identified, in the table below, each proceeding (of which it is aware) along with
`
`the corresponding status.
`
`Proceeding
`
`Status
`
`Symantec v. Uniloc, CD CA, 8: 10—cv—01483—DOC—MLG
`
`transferred to ED Tex., docket 6: 1 1-
`cv—00033 (see below)
`
`Uniloc v. Xtreamlok, CD CA, 2:08—cv—03574—DOC—MLG
`
`dismissed 11/30/09
`
`Uniloc v. Macrovision, CD CA, 2:08—cv—00203—DOC—MLG
`
`dismissed 5/28/08
`
`Uniloc v. Microsoft, D RI, 1:03—cv—440—WY—DLM
`
`Active — on remand from the Federal
`Circuit.
`
`Symantec v. Uniloc, ED Tex., 6:11—cv—00033—LED
`
`Stayed 12/1/11
`
`Uniloc v. Foxit, ED Tex., 6:10—cv—00691—LED
`
`Stayed 12/1/11
`
`Uniloc v. BMC, ED Tex., 6:10—cv—00636—LED
`
`Stayed 12/1/11
`
`2
`
`Petitioners Ex. 1021 Page 5
`
`Petitioners Ex. 1021 Page 5
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`Proceeding
`
`Status
`
`Uniloc V. Engrasp, ED Tex., 6:10-cV-00591-LED
`
`Stayed 12/1/ll
`
`Uniloc V. National Instruments, ED Tex., 6: 10-cV-00472-
`LED
`
`
`Stayed 12/1/ll
`
`Uniloc V. Disk Doctors, ED Tex., 6:10-cV-00471-LED
`
`Stayed 12/1/11
`
`Uniloc V. Sony, ED Tex., 6:10-cV-00373-LED
`
`Stayed 12/1/11
`
`Uniloc V. Cyberlink, ED Tex., 6:10-cV-00069-LED-JDL
`
`dismissed 11/17/10
`
`Uniloc V. BCL, ED Tex., 6:10-cV-00018-LED-JDL
`
`dismissed 1/3/11
`
`Uniloc V. Abbyy, ED Tex., 6:09-cV-00538-LED-JDL
`
`dismissed 1/3/11
`
`Uniloc USA, Inc. V. Sureloc, Inc., California Superior
`Courts, Orange County, uniform case number 30-2011-
`00519641-CU-SL-CXC, filed 11/01/11.
`
`ActiVe
`
`III.
`
`CITATION OF THE PRIOR PATENTS AND PUBLICATIONS
`
`Reexamination of claims 1-11 and 17-20 of the ‘216 Patent is requested in View of the
`
`below-listed patents and printed publications, which are also listed on the attached Form
`
`PTO/SB/08 in accordance with 37 C.F.R. § 1.510(b)(2). Pursuant to 37 C.F.R. § 1.5l0(b)(3), a
`
`copy of each of the following prior art patents and printed publications is attached:
`
`0 U.S. Patent No. 4,599,489 to Cargile, issued July 8, 1986, entitled “Solid State Key
`
`for Controlling Access to Computer Software” (hereinafter “Cargile”) (attached as
`
`Exhibit E);
`
`0 WO 92/09160 to Waite et al., published 29 May 1992, entitled “A Secure System for
`
`ActiVating Personal Computer Software at Remote Locations” (hereinafter “Waite”)
`
`(attached as Exhibit F);
`
`0 U.S. Patent No. 4,779,224 to Moseley et al., issued October 18, 1988, entitled
`
`“Identify Verification Method and Apparatus” (hereinafter “Moseley”) (attached as
`
`Exhibit G); and
`
`Petitioners Ex. 1021 Page 6
`
`Petitioners Ex. 1021 Page 6
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`0 Held, “Understanding Data Communications, Third Edition,” © 1988 & 1991 by
`
`SAMS, Third Edition, Second Printing — 1992, p gs. 220-221 (hereinafter “Held”)
`
`(attached as Exhibit H).
`
`Each of the foregoing references, individually and/or in combination, presents substantial
`
`new questions of patentability for claims 1-11 and 17-20 of the ‘216 Patent.
`
`Iv.
`
`IDENTIFICATION OF CLAIMS FOR WHICH REEXAMINATION IS
`
`REQUESTED
`
`In accordance with 37 C.F.R. § 1.510(b)(2), reexamination of claims 1-11 and 17-20 of
`
`the ‘216 Patent is requested.
`
`The tables below summarize the substantial new questions of patentability (SNQs) (as
`
`described in detail in Section X, infra) and the manner and pertinency of applying the cited prior
`
`art (also described in detail in Section X, infra). For convenience of presentation, these tables
`
`are categorized based on the primary reference used in the proposed rejections.
`
`SNQs based on Cargile as the Primary Reference
`
`SNQ # Substantial New Question
`
`1
`
`2
`
`3
`
`4
`
`Claims 1, 2, 10, 11, 19, and 20 are unpatentable under 35 U.S.C. § 102(b) as
`being anticipated by Cargile.
`
`Claims 1, 2, 10, 11, 19, and 20 are unpatentable under 35 U.S.C. § 103 as being
`obvious over Cargile.
`
`Claims 1-11, 19, and 20 are unpatentable under 35 U.S.C. § 103 as being
`obvious over Cargile in view of Waite.
`
`Claims 17 and 18 are unpatentable under 35 U.S.C. § 103 as being obvious over
`Cargile in view of Waite.
`
`SNQs based on Waite as the Primary Reference
`
`SNQ # Substantial New Question
`
`Claims 19 and 20 are unpatentable under 35 U.S.C. § 102(b) as being anticipated by Waite.
`
`Petitioners Ex. 1021 Page 7
`
`Petitioners Ex. 1021 Page 7
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`SNQ # Substantial New Question
`
`6
`
`Claims 19 and 20 are unpatentable under 35 U.S.C. § 103 as being obvious over
`Waite in View of Held.
`
` 7
`
`Claims 1-11 are unpatentable under 35 U.S.C. § 103 as being obvious over
`Waite.
`
`8
`
`Claims 1-11 are unpatentable under 35 U.S.C. § 103 as being obvious over
`Waite in View of Held.
`
`SNQS based on Moseley as the Primary Reference
`
`SNQ # Substantial New Question
`
`obvious over Moseley in View of Cargile.
`
`Claims 1, 2, 10, ll, 19, and 20 are unpatentable under 35 U.S.C. § l02(b) as
`being anticipated by Moseley.
`
`Claims 1, 2, 10, ll, 19, and 20 are unpatentable under 35 U.S.C. § 103 as being
`
`V.
`
`OVERVIEW OF THE ‘216 PATENT
`
`The alleged “invention” of the ‘2l6 Patent “. . .relates to improvements in systems for
`
`software registration.” ‘2l6 Patent, col. 1, lines 5+.
`
`A.
`
`Specification
`
`The Specification of the ‘2l6 Patent describes a “system. . .designed and adapted to allow
`
`digital data or software to run if and only if an appropriate licensing procedure has been
`
`followed.” ‘2l6 Patent, col. 2, lines 52-55.
`
`With reference to FIG. 1 of the ‘2l6 Patent (reproduced below), a “prospective new user
`
`ll inserts disk 10 [including software to be licensed] into the user PC 12 so as to be read by PC
`
`12.” ‘2l6 Patent, col. 6, lines 39-40. During the software installation procedure, the user is
`
`provided “with a choice of either seeing a demonstration of the software (which typically has
`
`features such as save and/or print disabled) or alternatively an invitation to register
`
`ownership/licensee of the software (after which all features of the software are made available to
`
`the user).” ‘2l6 Patent, col. 6, lines 47-52.
`
`Petitioners Ex. 1021 Page 8
`
`Petitioners Ex. 1021 Page 8
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`
`
`FIG. 1 of the ‘216 Patent.
`
`If the user elects to register the software, he or she is presented with a dialogue box and
`
`prompted “. . .for details unique to that user (including, for example, name, company, address,
`
`state, contact number) together with financial details for payment for the purpose of becoming a
`
`registered user of the software protected by the registration routine (for example Mastercard or
`
`corporate account number details).” ‘216 Patent, col. 7, lines 8-14.
`
`Information provided by the user “. . .is passed through a registration number algorithm
`
`14 (represented symbolically in FIG. 1) which generates a registration number or security key
`
`from the information unique to the user together with the serial number previously generated.”
`
`‘216 Patent, col. 7, lines 14-19.
`
`“An identical registration number algorithm 14 resides on the registration authority PC
`
`15. As an integral part of the registration procedure, the prospective new user ll communicates
`
`the information unique to the user which was entered by the user on the user PC 12, along with
`
`the serial number generated by the user's algorithm, to the registration authority 16. The
`
`registration authority feeds this information into the registration authority PC 15 wherein the
`
`registration number algorithm 14 should produce an identical registration number or security key
`
`to that produced by the user PC 12 if the details communicated to the registration authority by
`
`the prospective new user ll match with the details that have been entered on the user PC 12.”
`
`‘216 Patent, col. 7, lines 21-33.
`
`Petitioners Ex. 1021 Page 9
`
`Petitioners Ex. 1021 Page 9
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`FIG. 8 of the ‘2l6 Patent (reproduced below) depicts “a block diagram of a system...
`
`which is to be read in the context of the... generalized description in respect of FIG. 1.” ‘2l6
`
`Patent, col. ll, lines 39+.
`
`LOCAL LICENSEE LOCATION
`INTERNAL
`BOND
`
`J9
`
`
`
`jg
`
`USER
`PROGRAM
`
`
`
`3/
`
`Ljj_.
`I
`I
`EXECUTE ON PLATFORM
`
`REMOTE REGBTRADON
`DATABASE LocAnoN
`
`5/
`
`ALG
`
`52
`REGISTRATION
`DATABASE
`PROGRAM
`
`
`
`
`REMOTE
`LICENSEE
`UNIQUE
`|.D.
`GENERATOR
`
`
`
`55
`
`LOCAL
`LICENSEE
`UNIQUE
`|.D.
`GENERATOR
`
`
`
`PROGRAM
`SUBSET
`
`(DEMO)
`
`PLATFORM
`UNIQUE
`
`
`
`
`GENERATOR
`
`FIG. 8 of the ‘216 Patent.
`
`As shown, the system includes a “local licensee location” and a “remote registration
`
`database location.” The local licensee location comprises a local licensee unique ID generator
`
`used to generate a registration number 66. The remote registration database location comprises a
`
`remote licensee unique ID generator 67 used to generate a registration number 66.
`
`The Specification of the ‘2l6 Patent describes that the local licensee unique ID generator
`
`and remote licensee unique ID generator 67 use the same algorithm to generate registration
`
`number 66. ‘2l6 Patent, e.g., col. 3, lines 3-9; col. 5, line 57 — col. 6, line 8; col. 7, lines 14-33;
`
`and col. ll, lines 45-52.
`
`Mode switcher 68 (at the local location) “. . .allows execution on platform 31 of the full
`
`user program 39” upon Verification that the registration numbers generated by the local licensee
`
`Petitioners Ex. 1021 Page ‘IO
`
`Petitioners Ex. 1021 Page 10
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`unique ID generator and remote licensee unique ID generator 67 match.
`
`‘216 Patent, col. 11,
`
`lines 63-65.
`
`The registration system described in the ‘216 Patent uses Licensee Unique IDs
`
`(“LUIDs”) (‘216 Patent, e.g., col. 3, lines 29-32; col. 3, lines 41-43; col. 3, lines 46-49; col. 3,
`
`lines 50-53; col. 4, lines 59-62; col. 5, lines 61-64; col. 12, lines 62-65; col. 13, lines 6-10; col.
`
`13, lines 11-17; and col. 13, lines 30-36) to determine whether the “appropriate licensing
`
`procedure has been followed.” ‘216 Patent, e.g., Abstract; col. 2, lines 54-55; and col. 5, lines
`
`50-51.
`
`The ‘216 Patent alternatively refers to a LUID as, for example: a “registration number”
`
`(‘216 Patent, e.g., Abstract; col. 2, line 65 — col. 3, line 2; col. 3, lines 3-9; col. 3, lines 10-17;
`
`col. 5, lines 61-64; col. 6, lines 15-21; and col. 7, lines 14-33); a “registration key” (‘216 Patent,
`
`e.g., col. 5, lines 61-64; col. 4, lines 42-43; col. 5, lines 61-64; and col. 13, lines 6-10); an
`
`“enabling key” (‘216 Patent, e.g., col. 4, lines 35-47; col. 6, lines 1-8; and col. 13, lines 6-10);
`
`and a “security key” (‘216 Patent, e.g., col. 3, line 65 — col. 4, line 5; col. 4, lines 13-17; col. 6,
`
`line 63 — col. 7, line 5; col. 7, lines 14-33; and col. 8, lines 2-5).
`
`An LUID is a unique identifier that is associated with the intended licensee of the
`
`executable digital data.
`
`‘216 Patent, e.g., col. 2, line 65- col. 3, line 2; col. 3, line 65 — col. 4,
`
`line 5; col. 6, lines 16-22; and col. 6, line 63 — col. 7, line 7.
`
`The ‘216 Patent describes that the registration number (i.e., LUID) is generated via a
`
`summation of various inputs including, for example: “. .. a serial number generated from
`
`information provided by the environment in which the software to be protected is to run (e.g.,
`
`system clock, last modify date, user name)” (‘216 Patent, col. 4, lines 8-11); customer
`
`information (‘216 Patent, e.g., col. 11, line 55; col. 3, lines 50-53; and col. 7,lines 8-20); a
`
`software product name (‘216 Patent, e.g., col. 11, line 54; and col. 12, lines 54-57); and a
`
`previous user identification (‘216 Patent, e.g., col. 11: line 55).
`
`FIG. 9 of the ‘216 Patent (reproduced below) depicts a block diagram indicating one
`
`particular example of the generation of a registration number (i.e., a LUID).
`
`Petitioners Ex. 1021 Page 11
`
`Petitioners Ex. 1021 Page 11
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`VARIABLE
`
`SYSTEM
`
`50
`INFORMATION
`KEY PORTION
`7/
`72
`1/
`—*
`7
`—\r
`r
`CC SE” "0-
`
`+
`
`+
`
`6/
`
`65
`
`CUSTOMER
`
`INFORMATION
`
`22
`
`/PREVIOUS USER
`
`IDENTIFICATION
`
`66
`
`- E:I:j/§Efi:SEE‘T‘°"
`
`FIG. 9 of the ‘216 Patent
`
`According to the Specification of the ‘2l6 Patent, to generate a LUID, a registration
`
`number algorithm uses a summation algorithm which, in software implementations, “combines
`
`by addition.” In hardware implementations, the registration number algorithm uses a “summer.”
`
`‘2l6 Patent, e.g., col. 4, lines 6-ll; col. 7, lines 14-20; col. ll, lines 53-57; Col. 12, lines 61-65;
`
`and Col. 13, lines 4-10.
`
`The ‘2l6 Patent additionally describes that the registration number algorithm used
`
`locally to generate a local LUID is also used remotely (e.g., at registration authority PC) to
`
`generate a remote LUID.
`
`‘2l6 Patent, e.g., col. 3, lines 3-9; col. 5, line 57 — col. 6, line 8; col. 7,
`
`lines 14-22; and col. ll, lines 45-52. The remote registration authority provides the remote
`
`LUID to the local licensee location for comparison to the local LUID. ‘2l6 Patent, e.g., col. 7,
`
`lines 36-38; and Col. 13, lines ll-l7. The registration system “permits use of the digital data in
`
`the use mode on the platform only if a licensee unique ID generated by the local licensee unique
`
`ID generating means has matched a licensee unique ID generated by the remote licensee unique
`
`ID generating means.” ‘2l6 Patent, col. 3, lines 28-32. A hardware comparator (in hardware
`
`implementations) or software logic (in software implementations) checks whether the local
`
`LUID matches the remote LUID.
`
`‘2l6 Patent, e.g., col. ll, lines 58-65, and Col. 13, lines ll-l7.
`
`Petitioners Ex. 1021 Page 12
`
`Petitioners Ex. 1021 Page 12
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`B.
`
`Original Prosecution History
`
`The ‘216 Patent claims the benefit of two provisional specifications filed with the
`
`Australian Patent Office: (1) Provisional No. PL4842, filed 21 September 1992 (attached hereto
`
`as Exhibit C); and (2) Provisional No. PL5524, filed 26 October 1992 (attached hereto as Exhibit
`
`D).
`
`The relevant events (in terms of this Request) in the ‘216 Patent prosecution history,
`
`attached as Exhibit B, are summarized as follows:
`
`DATE
`
`EVENT
`
`09-21-1993
`
`Filing of U.S. Patent Application Serial No. 08/124,718
`
`The application, as-filed, included 30 total claims:
`
`0 Claims 1-12 directed to a “registration system”
`
`0 Claims 13-18 directed to a “security routine or registration system”
`0 Claims 19-21 directed to “a method of control of distribution of software”
`
`0 Claims 22-24 directed to “digital data incorporating registration code”
`
`0 Claim 25 directed to a “remote registration station”
`
`0 Claim 26 directed to a “method of registration of digital data”
`0 Claim 27 directed to a “media or a transmission medium”
`
`0 Claim 28 directed to a “media or a transmission medium”
`
`0 Claim 29 directed to a “media or a transmission medium”
`
`0 Claim 30 directed to a “remote registration station”
`
`06-24-1994
`
`Office Action
`
`0 Claims 22-24 and 27-29 were rejected under 35 U.S.C. § 101 as being
`directed to non-statutory subject matter
`
`0 Claims 13-18 and 27-29 were rejected under 35 U.S.C. § 112, ‘][2 as being
`indefinite
`
`0 Claims 1-30 were rejected under 35 U.S.C. § 102(e) as being anticipated
`by U.S. Patent No. 5,222,133 to Chou et al. (“Chou”)
`
`12-27 - 1994
`
`Amendment
`
`0 Claims 22-24 and 27-29 were cancelled
`
`0 Claims 13 and 18 were amended
`
`0 The Applicant presented remarks in an effort to distinguish Chou
`D
`
`The Applicant presented remarks in an effort to distinguish a newly-cited
`reference, U.S. Patent No. 5,291,598 to Grundy (“Grundy”)
`
`0
`
`In the remarks concernin g Grundy, the Applicant recited:
`
`The key to the present invention as claimed in Claim 1, for
`
`10
`
`Petitioners Ex. 1021 Page 13
`
`Petitioners Ex. 1021 Page 13
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`DATE
`
`EVENT
`
`example, is that a “licensee unigue ID” generated by a local
`licensee unigue ID generating means has matched a licensee
`unigue ID generated by a remote licensee unigue ID generating
`means (see the last four lines of Claim 1 as filed). This
`matching requirement reflects the fact
`that
`the underlying
`algorithms which process identifflng information input into
`both the local licensee unigue ID generating means and the
`remote licensee unigue ID generating means are the same and
`that both ID generating means rely upon the same information
`to generate the licensee unique ID.
`In effect, no new
`information is provided to the remote licensee unique ID
`generating means as compared with the information supplied to
`the local licensee unique ID generating means.
`
`[12—27—1994 Amendment, pg. 4, emphasis added].
`
`03-30-1995
`
`Office Action
`
`0
`
`Pending claims 1-21, 25, 26, and 30 were rejected under 35 U.S.C. § 103
`as being unpatentable over Grundy
`
`07-05-1995
`
`Amendment
`
`0
`
`Pending claims 1-21, 25, 26, and 30 were cancelled
`
`0 Claims 31-50 were newly added (which would later issue as claims 1-20
`of the ‘216 Patent)
`
`0
`
`In an effort to distinguish Grundy, the Applicant presented remarks
`focusing on two limitations:
`
`In response, the Applicant submits herewith redrafted claims,
`the main claims of which include, broadly, the following two
`distinguishing limitations:
`ID” on which the
`(a)
`The
`“Licensee Unigue
`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.
`
`[07—05—1995 Amendment, pg. 6, emphasis added].
`
`08-08-1995
`
`Notice of Allowance
`
`
`
`11
`
`Petitioners Ex. 1021 Page 14
`
`Petitioners Ex. 1021 Page 14
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`DATE
`
`EVENT
`
`0 Claims 1-30 were allowed
`
`0 No Reasons for allowance were provided
`
`C.
`
`Prosecution History — Prior Reexamination Proceeding
`
`As noted above, an “Ex Parte Reexamination Certificate” was issued on October 4, 2011
`
`(in prior Ex Parte Reexamination Control No. 90/010,831) confirming the patentability of claims
`
`1-20 of the ‘216 Patent over various references. The instant Request relies on various prior art
`
`references that were not applied in any of the rejection(s) in the prior reexamination proceeding.
`
`VI.
`
`OVERVIEW OF APPLICABLE PATENT LAW
`
`A.
`
`Claim Interpretation
`
`In determining whether a “substantial new question of patentability” has been shown and
`
`that reexamination is therefore appropriate, “the PTO must apply the broadest reasonable
`
`meaning to the claim language, taking into account any definitions presented in the
`
`specification.” In re Bass, 314 F.3d 575, 577, 65 U.S.P.Q. 1156 (Fed. Cir. 2002) (citing In re
`
`Yamamoto, 740 F.2d 1569, 1571, 222 U.S.P.Q. 934, 936 (Fed. Cir. 1984)).
`
`The requirement that claims be interpreted as broadly as their terms reasonably allow
`
`means that the words of the claim must be given their plain meaning unless the applicant has
`
`provided a clear definition in the specification. In re Zletz, 893 F.2d 319, 321, 13 U.S.P.Q.2d
`
`1320, 1322 (Fed. Cir. 1989). The broadest reasonable interpretation of the claims must also be
`
`consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165
`
`F.3d 1353, 1360, 49 U.S.P.Q.2d 1464, 1468 (Fed. Cir. 1999).
`
`As previously noted in Section II of this Request, the ‘216 Patent is currently (or has
`
`been) the subject of various litigation proceedings. Accordingly, Requester is attaching hereto
`
`the following decisions by the District Court and the Federal Circuit in the Uniloc v. Microsoft
`
`litigation that are relevant to claim construction of the ‘216 Patent:
`
`0 August 22, 2006 Decision and Order issued by the U.S. District Court for the District of
`
`Rhode Island, in which various disputed claim terms and phrases of the ‘216 Patent were
`
`construed (attached as Exhibit I);
`
`12
`
`Petitioners Ex. 1021 Page 15
`
`Petitioners Ex. 1021 Page 15
`
`

`
`Request for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`Attorney Docket No. 4000297-20000
`
`0 August 7, 2008 Federal Circuit Decision (reversing grant of summary judgment), in
`
`which the meaning of “licensee unique ID” was further addressed (attached as Exhibit J);
`
`0
`
`September 29, 2009 Decision and Order issued by the U.S. District Court for the District
`
`of Rhode Island granting judgment as a matter of law (JMOL) of non-infringement in
`
`Microsoft’s favor, in which the District Court discussed the meaning of LUID (pgs. 16-
`
`22), discussed what it means for an identifier to be “associated wit ” a licensee (pgs. 16-
`
`22), and addressed the meaning of “licensee unique ID generating means” (pgs. 22-37)
`
`and “registration system” (pgs. 37-43) (attached as Exhibit K); and
`
`0
`
`January 4, 2011 Federal Circuit Decision (reversing the District Court’s grant of JMOL
`
`of non—infringement), in which the Federal Circuit addressed “licensee unique ID
`
`generating means” (pgs. 15-24), and “registration system” and “mode switching means”
`
`(pgs. 24-25) (attached as Exhibit L).
`
`While some discussion of pertinent claim construction issues has been included in the
`
`analysis presented below, Requester has given the identified claims the broadest reasonable
`
`interpretation consistent with the specification of the ‘216 Patent. The Patent Office’s “broadest
`
`reasonable interpretation” of the claims should be at least as broad as the interpretation applied in
`
`the Uniloc v. Microsoft litigation?
`
`B.
`
`Anticipation
`
`To be entitled to patent protection under § 102, an invention must be novel. See 35
`
`U.S.C. § 102. According to the Federal Circuit, a claim is not novel if a reference discloses,
`
`expressly or inherently, within its four corners all the limitations arranged or combined in the
`
`same way as claimed. Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967 (citing Finisar
`
`Corp. v Direct TV, 523 F.3d 1323 (Fed. Cir. 2008); In re Skvorecz, 580 F.3d 1262 (Fed. Cir.
`
`2009); In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009).
`
`A reference anticipates a claim if it discloses the claimed invention “such that a skilled
`
`artisan could take its teachings in combination with his own knowledge of the particular art and
`
`be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697 (Fed.
`
`Cir. 1995) (citing In re Le