throbber
Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 1 of 61 PageID #: 389
`
`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.
`
`1
`1
`1
`1
`1
`1
`I
`1
`1
`I
`1
`1
`
`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
`
`Petitioners Ex. 1007 Page 1
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 2 of 61 PageID #: 390
`
`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
`
`Petitioners Ex. 1007 Page 2
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 3 of 61 PageID #: 391
`
`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
`
`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.
`
`Petitioners Ex. 1007 Page 3
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 4 of 61 PageID #: 392
`
`claims themselves and the specification because the context in
`
`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,
`
`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
`
`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 ,
`
`Petitioners Ex. 1007 Page 4
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 5 of 61 PageID #: 393
`
`however, that because the prosecution history "represents an
`
`ongoing negotiation between t h e PTO and the applicant," it i s less
`
`useful for claim construction purposes. Phillips, 415 F.3d at
`
`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
`
`Petitioners Ex. 1007 Page 5
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 6 of 61 PageID #: 394
`
`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
`
`Petitioners Ex. 1007 Page 6
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 7 of 61 PageID #: 395
`
`presumed to fall outside means-plus-function strictures. Once
`
`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.
`
`Petitioners Ex. 1007 Page 7
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 8 of 61 PageID #: 396
`
`2001).
`
`Having set forth the guiding claim construction principles,
`
`the Court now turns to the various disputed claim terms in t h i s
`
`case as s e t f o r t h by the parties in their j o i n t designation of
`
`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
`
`breadth and number of claim terms to be construed, for ease of
`
`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.
`
`Petitioners Ex. 1007 Page 8
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 9 of 61 PageID #: 397
`
`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
`
`Petitioners Ex. 1007 Page 9
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 10 of 61 PageID #: 398
`
`Microsoft stated the terms were synonymous, while Uniloc took the
`
`cautious position that the terms should only be treated
`
`synonymously under Uniloc's proposed construction. Because the
`
`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).
`
`Petitioners Ex. 1007 Page 10
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 11 of 61 PageID #: 399
`
`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.
`
`Petitioners Ex. 1007 Page 11
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 12 of 61 PageID #: 400
`
`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
`
`Petitioners Ex. 1007 Page 12
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 13 of 61 PageID #: 401
`
`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
`
`Petitioners Ex. 1007 Page 13
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 14 of 61 PageID #: 402
`
`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."
`
`Petitioners Ex. 1007 Page 14
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 15 of 61 PageID #: 403
`
`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:
`
`Petitioners Ex. 1007 Page 15
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 16 of 61 PageID #: 404
`
`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
`
`Petitioners Ex. 1007 Page 16
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 17 of 61 PageID #: 405
`
`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).
`
`Petitioners Ex. 1007 Page 17
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 18 of 61 PageID #: 406
`
`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
`
`Petitioners Ex. 1007 Page 18
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 19 of 61 PageID #: 407
`
`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
`
`Petitioners Ex. 1007 Page 19
`
`

`
`Case 1:03-cv-00440-WY-DLM Document 145 Filed 08/22/06 Page 20 of 61 PageID #: 408
`
`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 prosecution
`history previously relied upon in its vendor information argument,
`see UNILOC 0144, Microsoft also relies on the following prosecution
`history statements:
`
`Applicant respectfully submits that Chou is not
`particularly relevant to the claims of the present
`application because Chou covers a version of a hardware
`lock whereby each and every copy of the software to be
`pr

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket