UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`ZEBRA TECHNOLOGIES CORP., UBISOFT, INC.
`AND CAMBIUM LEARNING GROUP, INC.
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`Case No. TBD
`Patent 5,490,216
`
`
`
`DECLARATION OF DR. VIJAY K. MADISETTI
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`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
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`Communications Engineering from the Indian Institute of Technology (IIT) in
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`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
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`tenured full Professor at Georgia Institute of Technology, and I have been on the
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`faculty of Georgia Institute of Technology since 1989. I have authored or co-
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`authored over 100 reference articles in the area of electrical engineering. I have
`
`also authored, co-authored, or edited several books in the areas of electrical
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`engineering, communications, signal processing, communications, and computer
`
`engineering, including VLSI Digital Signal Processors (1995) and The Digital
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`Signal Processing Handbook (First & Second Editions) (1998, 2012), and recently,
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`Cloud Computing (2013) and Internet of Things (2014). Although I discuss my
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`expert qualifications in more detail below, I also attach as Appendix A a recent
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`and complete curriculum vitae, which details my educational and professional
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`background and includes a listing of most of my publications.
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`3.
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`I have been involved in research and technology in the area of
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`distributed computer and information systems since the late 1980s, and my work in
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`this area has focused on secure and efficient distribution of information over
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`networks, synchronization of updates across a distributed network, and
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`multiprocessing systems and tools.
`
`4.
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`In 1987, at UC Berkeley, I worked on implementing a globally
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`distributed file system, called GAFFES, to facilitate information sharing in a global
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`network of workstations. GAFFES provided four services to handle naming,
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`replication and caching, security and authentication, and file access primitives.
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`GAFFES outlined features of access in terms of users and their roles, and in terms
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`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.
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`5.
`
`I have authored, co-authored, or edited several books in the past
`
`twenty years, including:
`
`• VLSI Digital Signal Processors
`Madisetti, V.K.
`• Quick-Turnaround ASIC Design in VHDL
`Romdhane, M., Madisetti, V.K., Hines, J.
`• The Digital Signal Processing Handbook (First Edition)
`Madisetti, V. K., Williams, D. (Editors)
`• VHDL: Electronics Systems Design Methodologies.
`Madisetti, V. K. (Editor)
`• Platform-Centric Approach to System-on-Chip (SoC)
`Design.
`Madisetti, V. K., Arpnikanondt, A.
`
`
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`• The Digital Signal Processing Handbook – Second Edition.
`Madisetti, V. K. (2009/2010)
`• Cloud Computing: A Hands-On Approach
`
`• Internet of Things: A Hands-On Approach
`
`A Bahga, V. Madisetti (2013)
`A Bahga, V. Madisetti (2014)
`
`
`6.
`
`In the past decade I have authored several peer-reviewed papers in the
`
`area of computer and software design, and these include:
`
`• V. Madisetti, et al: “The Georgia tech Digital Signal Multiprocessor,
`IEEE Transactions on Signal Processing, Vol 41, No. 7, July 1993
`• V. Madisetti et al, “Rapid Prototyping on the Georgia Tech Digital
`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol
`42, March 1994.
`• V. Madisetti, “Reengineering legacy embedded systems”, IEEE
`Design & Test of Computers, Vol 16, Vol 2, 1999
`• V. Madisetti et al, “Virtual Prototyping of Embedded Microcontroller-
`based DSP Systems”, IEEE Micro, Vol 15, Issue 5, 1995
`• V. Madisetti, et al, “Incorporating Cost Modeling in Embedded-
`System Design”, IEEE Design & Test of Computers, Vol 14, Issue 3,
`1997
`• V. Madisetti, et al, “Conceptual Prototyping of Scalable Embedded
`DSP Systems”, IEEE Design & Test of Computers, Vol 13, Issue 3,
`1996.
`• V. Madisetti, Electronic System, Platform & Package Codesign,”
`IEEE Design & Test of Computers, Vol 23, Issue 3, June 2006.
`• V. Madisetti, et al, “A Dynamic Resource Management and
`Scheduling Environment for Embedded Multimedia and
`Communications Platforms”, IEEE Embedded Systems Letters, Vol 3,
`Issue 1, 2011.
`
`7.
`
`I have over 100 peer-reviewed publications issued from the early
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`1980s to the present on topics related to computer engineering, computer sciences
`
`and wireless communications and digital system design.
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`8.
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`I am a Fellow of the Institute of Electrical and Electronics
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`Engineering (“IEEE”), which signifies the highest professional standing in my
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`research and educational community.
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`9.
`
`I have already been qualified as an expert in over a dozen trials, and
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`two recent cases: Harkabi v. SanDisk Corp., No. 08-cv-8203 (S.D.N.Y.) and
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`Yangaroo Inc. v. Destiny Media Techs. Inc., No. 09-cv-462 (E.D. Wisc.) the
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`technology at issue was specific to the area of digital rights management of
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`software products. I testified in both of these cases at trial (Harkabi v. SanDisk)
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`and by deposition (Yangaroo v. Destiny).
`
`10.
`
`In sum, I have over 25 years of experience in research and
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`development in the areas of computer engineering and electrical engineering as a
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`professor, researcher and consultant.
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`11.
`
`I have been retained by Zebra Technologies Corp., Ubisoft, Inc. and
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`Cambium Learning Group, Inc. and am submitting this declaration to offer my
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`independent expert opinion concerning certain issues raised in the Petition for
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`inter partes Review (“Petition”). I am being compensated at my normal
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`consulting rate of $450/hour. My compensation is not based on the substance of
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`the opinions rendered here. As part of my work in connection with this matter, I
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`have studied U.S. Patent No. 5,490,216 (“the ‘216 patent”), including the
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`respective written descriptions, figures, claims, in addition to the original file
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`
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`history and subsequent reexamination proceedings. Moreover, I have reviewed
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`various documents from the prior litigation proceeding in the U.S. District Court
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`for the District of Rhode Island, Uniloc USA, Inc. et al. v. Microsoft Corp., No. 03-
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`CV0440 (WES) and subsequent Federal Circuit opinions on appeals. Moreover, I
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`have reviewed the Petition for Inter Partes Review of the ‘216 patent and also
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`considered at least the following references:
`
`• U.S. Patent No. 4,796,220 to Wolfe (“Wolfe”), entitled “method of
`Controlling the Copying of Software,” filed on December 15, 1986
`and issued on January 3, 1989 [Exhibit 1002]
`
`• Bryon K. Ehlmann, “Designing Software to be Used Up and
`Protecting it from Pirates,” ACM SIGSMALL/PC Notes, vol. 11, iss.
`3 (Aug. 1985) (“Ehlmann”) [Exhibit 1003]
`
`• 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 1004]
`
`• Claim Construction Order entered in Uniloc USA, Inc. and Uniloc
`Singapore Private Ltd., v. Microsoft Corp., Case No. 1:03-cv-00440-
`WY-DLM (Aug. 22, 2006 D. R.I.) [Exhibit 1007]
`
`• Federal Circuit Opinion, dated Aug. 7, 2008, entered in Uniloc USA, Inc.
`and Uniloc Singapore Private Ltd., v. Microsoft Corp. [Exhibit 1008]
`
`• Federal Circuit Opinion, dated January 4, 2011, entered in Uniloc USA,
`Inc. and Uniloc Singapore Private Ltd., v. Microsoft Corp. [Exhibit
`1005]
`
`II. OPINION
`A. Level of a Person Having Ordinary Skill in the Art
`12.
`It is my understanding that Patent Owner has previously identified,
`
`and the Petitioner is presently suggesting, that the level of a person having ordinary
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`skill in the art as of September 1992 as having a Bachelor’s Degree or equivalent,
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`in Electrical Engineering or Computer Science, or one to two years of experience
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`in software development or the equivalent work experience. I have no reason to
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`disagree with this suggested level of ordinary skill in the art. Based on my
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`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
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`the art at the time of the claimed invention. Additionally, I was a person having
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`ordinary skill in the art as of the filing date of the ‘216 Patent and as of the filing
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`dates of the two Australian patent applications to which the ‘216 Patent claims
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`priority.
`
`B.
`Background of Software Registration & Activation
`13. Software authorization and licensing systems have been of interest,
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`and available, to the industry at least since the early 1980s. Appendix B, Suhler, et
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`al., IEEE Software (1986). This availability and use increased significantly with
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`the wider use of software by end-users. Suhler at p. 34. As use and distribution of
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`software increased, however, it became apparent that there were problems
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`associated with the increased use – an increase in unauthorized use, or pirates.
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`Suhler at 34. As a result, the industry became more interested in methods of
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`preventing unregistered sales and unauthorized use
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`through
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`the use of
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`authorization and licensing technologies. Suhler at 35.
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`14.
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`In order for such technologies to be viable, however, software
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`designers had to take into account cost and compatibility with existing programs
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`and operating systems, including those that are not otherwise protected and those
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`that are protected. Suhler at 35. Taking these concerns to mind, some of the initial
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`technologies included hardware devices, such as dongles. For example, in 1980,
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`Business Professional Industrial protected its accounting software with a hardware
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`security device that was inserted into a game paddle port. Suhler at 35. Sensor-
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`Based System also used the hardware approach by requiring the installation of a
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`PROM chip in the system. Suhler at 35. The major drawbacks of these systems
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`were cost, portability, inconvenience and durability.
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`15. From the hardware devices mentioned above, the focus of software
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`authorization shifted to preventing unauthorized copying and prevention of
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`unauthorized execution of software products. Techniques developed to address
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`this new focus include copy protection, validation and encryption. Suhler at 35-36.
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`However these all have their own advantages and disadvantages, as described
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`below:
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`16.
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`The ‘216 Patent focuses on the validation approach in which
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`protected software checks the right of the user to execute or operate the software.
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`Systems using the validation approach typically look for a unique key in the
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`system, and if it is not found, the program assumes that the software is on an
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`unlicensed machine and execution is aborted. Suhler at 36. If the key is found, the
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`program continues to execute.
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`17. A related validation method is customer-based validation. An
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`example of this is found in the case of the “Computerized Gradebook.” Ex. 1003,
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`Ehlmann, “Designing Software to be Used Up and Protecting it From Pirates,”
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`ACM SIGSMALL/PC Notes, vol. 11, iss. 3, pp. 9-15 (Aug. 1985). I personally
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`downloaded the Ex. 1003 article from the Association for Computing Machinery
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`website
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`on
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`or
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`around
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`July
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`14,
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`2014,
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`from
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`the
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`following
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`link:
`
`http://dl.acm.org/citation.cfm?id=383023, which webpage is included in Ex. 1003
`
`as it exists today and reflects the publication information described above. I have
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`no reason to believe this publication information is inaccurate. The Computerized
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`Gradebook utilizes a “software-based software authorization system,” also referred
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`to as a “customer validation procedure.” Ehlmann at 10. A teacher using the
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`Computerized Gradebook may use the software a number of times without
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`obtaining authorization. Ehlmann at 10, 14. However, in order to obtain full rights
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`to the software, the teacher must obtain a password from the vendor. The teacher
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`does so by either calling or mailing a twelve-digit number displayed on the
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`software front screen. Ehlmann at 10, 11. The twelve-digit number is made up of:
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`(1) a six-digit number unique to that piece of software (i.e., serial number), (2) a
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`two-digit number based on the number of classes recorded in the gradebook, and
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`(3) a four-digit number that characterizes how the gradebook has been used up to
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`that time. Ehlmann at 11, 12, 13-14. Thus, this number is unique to the software
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`and to the user. From this number, the vendor generates a password and transmits
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`it, orally or physically, to the teacher. Ehlmann at 12, 14. The teacher then enters
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`the password and the software validates the password “based on the same
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`computation used by the vendor. Ehlmann at 14.
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` Once validated, the
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`Computerized Gradebook is available for further full use.
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`C.
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`Software Registration and Activation According to the Asserted
`Patent
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`18.
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`In the background of the asserted patent, the Applicant describes a
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`number of software registration systems. Specifically, the Applicant noted systems
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`that require a user to input a vendor-assigned unique number at the time of
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`installation. Ex. 1001, ‘216 Patent at 1:11-19. The Applicant noted systems where
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`an intending licensee is initially given only a shell program and must obtain
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`essential portions of the program from a remote location upon payment of the
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`registration fee. Id. at 1:29-56. The Applicant also noted two patents (U.S. Patent
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`Nos. 4,796,220 and 4,688,169) describing registration systems that uniquely
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`recognize the platform upon which the software is to be run, and only allow the
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`software to run if the platform is registered.
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`19. The software registration system described in the ‘216 Patent is based
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`on a few simple concepts. First, a registration number is generated on a user’s PC
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`from information input by the user or provided by the software vendor using a
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`registration algorithm. Ex. 1001, ‘216 Patent at 2:65-3:2, 3:18-21. Second, using
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`the same inputs and same registration algorithm, another registration number is
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`generated at a remote registration authority and provided to the user. Ex. 1001,
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`‘216 Patent at 3:3-9. Finally, these two registration numbers are compared at the
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`user’s computer and if the two numbers match, the protected software is allowed to
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`run in a fully-enabled mode. ‘216 Patent at 7:38-46.
`
`
`
`D. Claim Construction
`20.
`I understand that the terms of the ‘216 patent have been construed as
`
`follows:
`
`Claim Term
`Licensee Unique ID (claims 1,
`19, 20) Enabling Key (claim 17)
`Information
`uniquely
`descriptive of an
`intending
`licensee (claim 2)
`
`Algorithm (claims 1, 19, 20)
`
`Includes the algorithm utilized
`by said local licensee unique ID
`generating means to produce
`said licensee unique ID (claims
`1, 19, 20)
`third party
`Generated by a
`means of operation of
`a
`duplicate
`copy
`of
`said
`registration
`key
`generating
`means (claim 17)
`Use mode (claims 1, 7, 19, 20)
`Fully enabled mode (claim 17)
`
`Partly enabled or demonstration
`mode (claim 17)
`
`Has matched (claims 1, 17, 19,
`
`20)
`
`
`
`
`
`District Court’s Claim Construction
`“a unique identifier associated with a licensee.”
`District Court CC Order at 9-21.
`“information that is uniquely associated with a
`person who intends to become a licensee so as
`to access full functionality of the digital data”
`District Court CC Order at 22-24
`“a set of instructions that can be followed to
`carry out a particular task” District Court CC
`Order at 29-30.
`“includes the identical algorithm used by the
`local licensee unique ID generating means to
`produce the licensee unique ID” District Court
`CC Order at 30-32.
`
`“generated by a third party’s use of a duplicate
`copy of the registration key generating means”
`District Court CC Order at 33-36.
`
`“a mode/version that allows full use of the
`digital data or software in accordance with the
`license” District Court CC Order at 36-39.
`“a mode that allows partial use of the digital
`data or software” District Court CC Order at 36-
`40.
`“a comparison between the locally generated
`licensee unique ID/registration key and the
`remotely generated licensee unique ID/enabling
`key shows that the two are the same” District
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`“mode switching means will
`permit said data to run in said
`use mode
`in
`subsequent
`execution … only
`if
`said
`platform unique ID has not
`changed” (claim 7)
`“registration system” (claims 1,
`19, 20)
`
`Court CC Order at 44-46.
`“the mode switching means will permit the data
`to run in the use mode only if the platform
`unique ID is identical to what it was the
`previous time the digital data were run” District
`Court CC Order at 47-49.
`
`“a system that allows digital data or software to
`run in a use mode on a platform if and only if an
`appropriate
`licensing procedure has been
`followed” District Court CC Order at 49-51.
`“provided to the mode-switching means by the
`person who intends to become a licensee”
`District Court CC Order at 51-52
`“communicated to the person who intends to
`become a licensee” District Court CC Order at
`51-52.
`ID Function: “to generate a
`unique
`licensee
`“local
`(claims 1, licensee unique ID”
`generating means”
`Structure:
`algorithm or a
`“a
`summation
`19, 20),
`ID summer and equivalents thereof” District Court
`licensee unique
`“remote
`generating means”
`(claims 1, CC Order at 25-28.
`19, 20)
`key
`“registration
`means” (claim 17)
`“mode
`switching
`(claims 1, 19, 20)
`“mode-switching means” (claim
`17)
`
`said mode-
`to
`“provided
`switching means
`by
`said
`intending user” (claim 17)
`“communicated
`to
`intending user” (claim 17)
`
`said
`
`generating
`
`means”
`
`“platform unique ID generating
`means” (claims 7-9)
`
`local or remote
`
`Function is “to permit the digital data or
`software to run in a use mode if the locally
`generated licensee unique ID matches with the
`remotely generated licensee unique ID”
`Structure: “program code, which performs a
`comparison of two numbers or a comparator and
`equivalents thereof” District Court CC Order at
`41-44.
`Function: “to generate a platform unique ID”
`Structure:
`“a
`summation
`algorithm or a
`summer and equivalents thereof” District Court
`CC Order at 58-61.
`
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`III.
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`
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`INVALIDITY UNDER 35 U.S.C. § 103
`A.
`Legal Framework
`21.
`
`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.
`
`22.
`
`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.
`
`23.
`
`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
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`problem is able to apply his or her experience and ability to solve the problem and
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`also look to any available prior art to help solve the problem.
`
`24. 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.
`
`25.
`
`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
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`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.
`
`26.
`
`I understand that hindsight must not be used when comparing the prior
`
`art to the invention for obviousness.
`
`27.
`
`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
`
`other information within the knowledge of one of ordinary skill in the art, the
`
`following are examples of approaches and rationales that may be considered:
`
`•
`
`•
`
`•
`
`•
`
`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;
`
`
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`•
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`•
`
`•
`
`28.
`
`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);
`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
`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.
`I understand that the rationale for modifying a reference and/or
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`combining references may come from sources such as explicit statements in the
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`prior art, or the knowledge of one of ordinary skill in the art, including any need or
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`problem known in the field at the time, even if different from the specific need or
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`problem addressed by the inventor of the patent claim.
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`29.
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`I understand that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider "secondary
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`considerations" if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an
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`invention would not have been obvious in view of these considerations, which
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`include: (a) commercial success of a product due to the merits of the claimed
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`invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of
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`others to find the solution provided by the claimed invention; (d) deliberate
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`copying of the invention by others; (e) unexpected results achieved by the
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`invention; (f) praise of the invention by others skilled in the art; (g) lack of
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`independent simultaneous invention within a comparatively short space of time;
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`(h) teaching away from the invention in the prior art.
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`30. I further understand that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be to prior art features. The
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`establishment of a nexus is a question of fact.
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`B. Operating Systems
`31.
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`I note that claims 10 and 11 require the presence of a “computer
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`operating system environment.” While Logan does not expressly disclose the
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`particular architecture of the personal or traditional computers on which their
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`programs operate, the presence of an “operating system” in such contexts is
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`required and, therefore, implicitly present. This is true because, by 1992, and even
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`prior to that time, operating systems for personal computers had become
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`ubiquitous and necessary to the operation of software on the computer. For
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`example, in April 1992, Microsoft released Windows 3.1. Even earlier, Apple
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`released the predecessor to Mac OS (referred to as “System Software” in early
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`versions) in 1984 (with System 7 being released in 1991) and the LINUX operating
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`system was released in 1991. Indeed, the ‘216 Patent itself identifies multiple
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`operating systems available at the time, such as Microsoft DOS, IBM OS/2 and
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`Macintosh System 7. Ex. 1001, ‘216 Patent at 2:32-36. While these are only a
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`few of the operating systems available at the time, it is clear that operating systems
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`for traditional personal computers were almost universally being used by 1992 and
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`that any program running on a computer, including those described in the
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`references, would be adapted to run under that operating system or in that
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`environment. Therefore, the presence of an “operating system” in Logan, in
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`particular, is implicitly, if not expressly, present. In the event that these limitations
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`are not implicit in the Logan, it would have been obvious to use the software of
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`both on a computer having an operating system for the reasons stated above.
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`C. Wolfe and Ehlmann
`32.
`It is my opinion that it would have been obvious to a person having
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`ordinary skill in the art to combine the software described in Wolfe with the
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`evaluation mode functionality described by Ehlmann. I have reviewed and
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`considered the entire Wolfe and Ehlmann references and provide exemplary
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`citations below regarding my analysis.
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`33. Wolfe and Ehlmann both describe systems relating to protecting
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`software generally and, more specifically, to ensuring that software is only used by
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`authorized users. Ex. 1002, Wolfe at Abstract, 2:53-68; Ex. 1004, Ehlmann at p. 9-
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`13.
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`34. The system in Wolfe, for example, discloses a registration process by
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`which a user is asked to enter a software serial number and a configuration code
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`that are then provided to a central computer. Ex. 1002, Wolfe at 4:40-48, 5:16-21.
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`The configuration code is based on the configuration of the user’s computer.
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`Wolfe at 5:1-10, Fig. 2. The central computer generates a permission code based
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`on the configuration code that is provided to and entered by the user in the
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`software. Wolfe at 7:24-41. One way of generating the permission code is through
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`adding the hard disk size to the RAM size and multiplying the resulting number by
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`the percent of free space (i.e., Permission Code = (Hard Disk size + RAM size) *
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`% Free Space). Wolfe at 7:35-38. If the permission code matches that generated
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`locally, the user is permitted to use the software. Wolfe at 5:38-51.
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`35. Ehlmann is also concerned with unauthorized use of software and
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`provides a “customer validation procedure” through which a user obtains a
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`validation password from a software vendor. Ex. 1003, Ehlmann at 10-14. Similar
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`to Wolfe, the user is permitted to use the software only if the validation password
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`provided by the vendor matches with a password generated by the software locally
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`“based on the same computation” used by the vendor. Ehlmann at 12, 14. The
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`validation password of Ehlmann is computed based on a twelve-digit number that
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`includes a software product number that is unique to each piece of software.
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`Ehlmann at 10, 12-14. Ehlmann also describes that a user may continue to use the
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`software for a limited time before a validation password will be required for further
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`use. Ehlmann at 10, 13-14.
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`36. By the time of the purported invention of the ‘216 Patent, therefore, it
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`was well known to those of ordinary skill in the art that a software serial number
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`could be used in the calculation of a password or registration number. Ex. 1004,
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`Ehlmann at 10-14. It was also clearly known that allowing a user to use software
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`for a limited time prior to purchasing or registering would be beneficial. These
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`concepts are expressly described by Ehlmann. Ehlmann at 10, 13-14.
`
`37. Upon reading the disclosure of Ehlmann, therefore, a skilled artisan
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`would have recognized that modifying the program of Wolfe to allow limited use
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`prior to entry of the permission code, as described in Ehlmann, would be desirable.
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`Similarly, one of skill in the art would have recognized that Wolfe could also
`
`easily be modified to use the software serial number, which is already sent to the
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`central computer in Wolfe (Wolfe at 4:40-48, 5:11-25), to generate the permission
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`code instead of either the RAM size or hard disk size.
`
`38. This combination is nothing more than adding and substituting features
`
`from Ehlmann to the software of Wolfe. One of ordinary skill would have
`
`achieved this modification by merely programming the central computer in Wolfe
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`to use the software serial number in calculating the permission code, as is done in
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`Ehlmann. This is a simple substitution of one variable in calculating the permission
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`code in Wolfe with a variable used in Ehlmann for a similar computation. Indeed,
`
`this is little more than a design choice as to what variables are used in the
`
`calculation. For example, typical computers in 1992 had around 20 to 200 mb hard
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`disk sizes and around 300 kb to 2 mb RAM. See, for example, Appendix C. As a
`
`result, the Wolfe permission code generating algorithm, using these numbers as
`
`inputs and an input of 75 % of free space would generate a permission code of (20
`
`+ 300) * 75 = 24000. Substituting the Ehlmann unique product ID (i.e., 030226)
`
`for one of the inputs, such as hard disk size, the resulting permission code would
`
`be (030226 + 300) * 75 = 2289450. Use of Ehlmann’s product number provides
`
`for an additional level of uniqueness of the resulting permission code and produces
`
`a permission code that would be hard for a user to guess without knowing the
`
`specific formula used to generate that code.
`
`39.
`
`It would have b