IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ATTORNEY REFERENCE NO.: 6620-83067-O1
`
`DATE OF DEPOSIT: January 22, 2010
`
`In re U. S. Patent No. 5,490,216
`Reexam Control N0.: TBD
`
`Currently in Litigations Styled:
`
`Uniloc USA, Inc. and Uniloc Singapore Private
`Limited. v. Microsoft Corporation, C.A. No. 03-
`440s (D. R.I.)
`
`and
`
`Uniloc USA, Inc. and Uniloc Singapore Private
`Limited v. Abbyy USA Software House, Inc. et al.,
`Case No. 6:09-cV-538 (E.D. TX)
`
`Issued: February 6, 1996
`
`Filed: September 21, 1993
`
`Applicant: Frederic B. Richardson, III
`
`Title: System for Software Registration
`
`Reguest for Ex Parte Reexamination of U.S. Patent No. 5,490,216
`
`MAIL STOP EX PARTE REEXAM
`
`ATTN: CENTRAL REEXAMINATION UNIT
`
`COMMISSIONER FOR PATENTS
`
`P.O. BOX 1450
`
`ALEXANDRIA, VA 22313-1450
`
`PETITIONERS EX. 1013
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`Page 1
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`PETITIONERS EX. 1013
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`

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`ATTORNEY REFERENCE NO.: 6620-83067-O1
`
`DATE OF DEPOSIT: January 22, 2010
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................ .. 4
`
`THE PRIOR ART REFERENCES THAT PRESENT SUBSTANTIAL NEW
`
`QUESTIONS OF PATENTABILITY .............................................................................. .. 9
`
`III.
`
`SUMMARY OF SNQS AND PROPOSED REJECTIONS ............................................. .. 9
`
`IV.
`
`OVERVIEW OF THE ‘216 PATENT ............................................................................ .. 10
`
`A. Example Embodiments of the ‘216 Patent...................................................................... .. 10
`
`B.
`
`Prosecution History......................................................................................................... .. 15
`
`V.
`
`CLAIM INTERPRETATION ......................................................................................... .. 18
`
`VI.
`
`PERTINENCE OF THE HELLMAN PATENT. ........................................................... .. 21
`
`A. Example Embodiments of the Hellman Patent. .............................................................. .. 22
`
`B. The Software Control System of the Hellman Patent Generally Matches the
`Registration System of the ‘216 Patent........................................................................... .. 29
`
`C. The Hellman Patent Discloses the Features Argued by the Applicant During
`Prosecution To Be Missing From the Grundy Patent. .................................................... .. 31
`
`D. The Hellman Patent Discloses Authorization and Check Values Unique to a
`Licensee and Associated with the Licensee .................................................................... .. 31
`
`E.
`
`The Hellman Patent Discloses Using the Same Algorithm Locally and Remotely
`to Produce the Authorization Value A and Check Value C ............................................ .. 39
`
`F. Of the Known Ways to Generate ID Values, Summation Algorithms Were
`Predictably Inferior to Cryptographic Functions. ........................................................... .. 39
`
`VII.
`
`PERTINENCE OF THE WOLFE PATENT , IN COMBINATION WITH THE
`HELLMAN PATENT ..................................................................................................... .. 40
`
`VIII.
`
`PERTINENCE OF THE GRUNDY PATENT. ........................................................... .. 41
`
`A. Example Embodiments of the Grundy Patent................................................................. .. 42
`
`B. The Owner Data Checksum and User Data Checksum of the Grundy Patent
`Were Not Considered During Prosecution. .................................................................... .. 46
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-O1
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`DATE OF DEPOSIT: January 22, 2010
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`C. The User Data Checksum and Owner Data Checksum of the Grundy Patent Are
`“Unique.” ........................................................................................................................ .. 47
`
`D. The Grundy Patent Discloses Using the Same Algorithm Locally and Remotely
`to Produce the User Data Checksum and Owner Data Checksum. ................................ .. 48
`
`E.
`
`The Grundy Patent Discloses Using the User/Owner Data Checksums In Mode
`Switching Decisions ........................................................................................................ .. 49
`
`IX.
`
`X.
`
`PERTINENCE OF THE WILLIAMS ARTICLE, IN COMBINATION WITH
`THE GRUNDY PATENT. ............................................................................................. .. 49
`
`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). .................................................................... .. 52
`
`A.
`
`SNQ 1 — Claims 1-11 and 17-20 Are Obvious Over the Hellman Patent ....................... .. 52
`
`B.
`
`SNQ 2 — Claims 1-11 and 17-20 Are Obvious Over the Hellman Patent in View
`of the Wolfe Patent. ........................................................................................................ .. 62
`
`C.
`
`SNQ 3 — Claims 1-20 Are Anticipated by the Grundy Patent. ....................................... .. 66
`
`D.
`
`E.
`
`SNQ 4 — Claims 1-20 Are Obvious Over the Grundy Patent in View of the
`Williams Article .............................................................................................................. .. 70
`
`SNQ 5 — Claims 12-16 Are Obvious Over the Hellman Patent in View of the
`Grundy Patent. ................................................................................................................ .. 75
`
`XI.
`
`CONCLUSION ............................................................................................................... .. 81
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-01
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`DATE OF DEPOSIT: January 22, 2010
`
`I.
`
`INTRODUCTION.
`
`Substantial new questions of patentability exist as to claims 1-20 of U.S. Patent No.
`
`5,490,216 (“the ‘216 patent”). Microsoft Corporation (“Microsoft” or “Requester”) therefore
`
`requests ex parte reexamination of claims 1-20 of the ‘216 patent pursuant to 35 U.S.C. § 302
`
`and 37 C.F.R. § 1.510. The ‘216 patent has not been previously reexamined.
`
`The ‘216 patent is still in force and, on information and belief, is currently assigned to
`
`Uniloc Private Limited, Singapore (“Uniloc”). The ‘216 patent has been asserted against
`
`Microsoft in the litigation captioned Uniloc USA, Inc. and Uniloc Singapore Private Ltd. v.
`
`Microsoft Corporation, case number 03-440S, in the U.S. District Court for the District of Rhode
`
`Island (“the Uniloc v. Microsoft litigation” or “the litigation”). In September 2009, the District
`
`Court granted Microsoft judgment as a matter of law of non-infringement, which Uniloc is
`
`currently appealing. In a separate litigation initiated in December 2009, Uniloc asserted the ‘216
`
`patent against more than a dozen new defendants. Uniloc USA, Inc. and Uniloc Singapore
`
`Private Ltd. v. Abbyy USA Software House, Inc. et al., case number 6:09-cv-538, in the U.S.
`
`District Court for the Eastern District of Texas.
`
`This reexamination request satisfies the requirements of 37 C.F.R. § 1.510(b) as follows:
`
`37 C.F.R. § 1.510(b)(1): A statement of each substantial new question of patentability
`
`(“SNQ”) is provided in Section III. A table summarizing the SNQs is located at page 7 of this
`
`request.
`
`37 C.F.R. § 1.510(b)(2): Reexamination of claims 1-20 of the ‘216 patent is requested.
`
`Sections VI-XIII provide a detailed explanation of the pertinence of the cited prior art references.
`
`A detailed explanation of application of the cited prior art to each claim element is provided in
`
`Section X by reference to the claim charts enclosed as Appendices A-C.
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-Ol
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`DATE OF DEPOSIT: January 22, 2010
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`37 C.F.R. § 1.510(b)(3): This reexamination request is based on the prior art references
`
`listed in Section II and enclosed as Exhibits 5-8. In addition, the prior art references listed in
`
`Section II are listed in Exhibit 12, which is an equivalent of Form PTO/SB/08, PTO-1449.
`
`37 C.F.R. § 1.510(b)(4): A copy of the ‘2l6 patent is enclosed as Exhibit 1. A copy of
`
`the ‘2l6 patent file history, including a List of Prior Art Cited by Applicant filed during the
`
`prosecution of the ‘2l6 patent, is enclosed as Exhibit 2. Copies of two Australian priority
`
`applications are enclosed as Exhibits 3 and 4.
`
`37 C.F.R. § 1.510(b)(5): This reexamination request is being served in its entirety on the
`
`attorneys of record in the ‘2l6 patent. A certification of service of this reexamination request on
`
`the patentee is provided on the last page of this reexamination request.
`
`The ‘2l6 patent claims a registration system and method for licensing the use of
`
`executable digital data such as computer software. Features of the claimed system and method
`
`were disclosed years earlier in a patent to Martin Hellman, one of the inventors of public key
`
`cryptography. U.S. Patent No. 4,658,093 (“the Hellman patent”) was not considered during the
`
`original prosecution of the ‘2l6 patent. The Hellman patent expressly discloses many of the
`
`main features of the claims of the ‘2l6 patent, including features on which the Applicant relied
`
`during the original prosecution to distinguish other prior art references.
`
`At a high level, the ‘2l6 patent and Hellman patent both present systems for licensing the
`
`execution of computer software. In each patent, the system includes a “local” computer of a
`
`user, who desires to use the software, and a “remote” computer of a registration authority, which
`
`licenses and authorizes use of the software. In each patent, a value unique to the licensee (i.e.,
`
`user) of the software is used in the authorization process. The ‘2l6 patent and Hellman patent
`
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`ATTORNEY REFERENCE NO.: 6620-83067-Ol
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`DATE OF DEPOSIT: January 22, 2010
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`use different terms for the ID Values, and the two patents use different algorithms to generate ID
`
`Values. Within the system of each patent, however, the same algorithm is used to generate the ID
`
`Value locally and generate the ID Value remotely. In each patent, a mechanism compares the
`
`locally generated ID Value to the remotely generated ID Value. The ID Values must match before
`
`use of the software is licensed and authorized.
`
`Notably, the Hellman patent discloses the Very features of the ‘2l6 patent claims that the
`
`Applicant touted during prosecution to distinguish the primary reference applied by the
`
`Examiner, which was U.S. Patent No. 5,291,598 to Grundy (“the Grundy patent”). The
`
`Applicant argued that the prior art fails to disclose local generation of an ID Value, and fails to
`
`disclose the same algorithm being used locally and remotely to generate ID Values for matching
`
`purposes:
`
`In response, the Applicant submits herewith redrafted claims, the main
`claims of which include, broadly, the following two distinguishing limitations:
`(a)
`The “Licensee Unique ID” 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.
`
`Amendment dated July 5, 1995, page 6, emphasis added. The Hellman patent describes the local
`
`computer generating an ID Value to match against the remotely generated ID Value. As to the
`
`second purported distinction, the algorithm used locally in the Hellman patent is also used at the
`
`remote computer.
`
`The Hellman patent thus describes a system strikingly similar to the system of the ‘2l6
`
`patent. There are differences between the two systems, but none of those differences merits the
`
`award of a patent. For example, some claims of the ‘2l6 patent require that the local ID Value be
`
`generated before the remote ID Value. See claim 1 of the ‘216 patent (“licensee unique ID” is
`
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`ATTORNEY REFERENCE NO.: 6620-83067-Ol
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`DATE OF DEPOSIT: January 22, 2010
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`“first generated” locally and “subsequently generated” remotely). In comparison, in the main
`
`embodiment of the Hellman patent, the ID Value is generated locally after it is generated
`
`remotely. Switching the timing is an obvious Variant of the Hellman patent’s disclosure — the
`
`local ID Value could easily be generated first and stored.
`
`As another example, the Hellman patent describes the use of cryptographic hash
`
`functions when generating ID Values. The ‘2l6 patent, in comparison, describes a simpler
`
`scheme that merely sums inputs to generate ID Values. Cryptographic hash functions are
`
`fundamentally different from summation algorithms, being, for example, more complex and
`
`more secure. See, e.g., JMOL Decision (Exhibit ll), pages 22-37 and 54-55. Using a simple
`
`summation algorithm instead of a cryptographic hash function is a significant technical
`
`difference, but it represents a step backward from the state of the art of the Hellman patent, and
`
`such a step does not merit being awarded patent protection.
`
`As another example of a difference between the ‘2l6 patent and the Hellman patent, the
`
`‘2l6 patent discloses comparing the locally and remotely generated ID Values to determine
`
`whether user information has been correctly entered. Although the Hellman patent does not
`
`disclose this feature, the Grundy patent does. The Grundy patent was cited during prosecution of
`
`the ‘2l6 patent, but key features were not addressed. In particular, the Examiner and Applicant
`
`did not address the user data checksums and owner data checksums disclosed in the Grundy
`
`patent. Instead, the Examiner and Applicant focused on more complicated codes into which the
`
`user data checksums and owner data checksums are merged. While the Applicant pointed out
`
`differences between these more complicated codes and the claims of the ‘2l6 patent, when the
`
`user data checksum and owner data checksum are themselves Viewed as ID Values, the Grundy
`
`patent expressly discloses the main features of the ‘2l6 patent claims.
`
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`ATTORNEY REFERENCE NO.: 6620-83067-Ol
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`DATE OF DEPOSIT: January 22, 2010
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`The following table shows salient features of the ‘2l6 patent and indicates whether the
`
`Hellman patent and Grundy patent disclose such features.
`
`X
`
`><
`
`System and method for licensing use of computer
`software
`Local and remote computers
`ID Value for user (licensee) of the software
`ID Value is unique to user and associated with user
`ID Value is computed using summation algorithm
`
`Local generation of ID Value
`
`Remote generation of ID Value
`
`2 —
`—
`
`2
`—2
`
`ID Value is not merged into other code used in
`authorization
`
`2— T
`——
`
`Same algorithm is used to generate ID Values
`locally and remotely
`
`ID Values are compared to check whether user
`information is correctly entered
`
`ID Values are compared to determine whether to
`authorize use
`
`he Hellman patent comes within a hairbreadth of anticipating many of the claims of the
`
`‘2l6 patent, but uses a cryptographic hash function instead of a summation algorithm. The
`
`Grundy patent anticipates the claims of the ‘2l6 patent, when attention is properly focused on the
`
`user data checksum and owner data checksum of the Grundy patent. No claim of the ‘2l6 patent
`
`should be allowed over the Hellman patent or Grundy patent.
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ID Value is first generated locally, and
`subsequently generated remotely
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`ATTORNEY REFERENCE NO.: 6620-83067-01
`
`DATE OF DEPOSIT: January 22, 2010
`
`II.
`
`THE PRIOR ART REFERENCES THAT PRESENT
`
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY.
`
`The following references, individually and/or in combination as explained below, present
`
`substantial new questions of patentability for claims 1-20 of the ‘216 patent. The references are
`
`listed on an Information Disclosure Statement (Form 1449), attached as Exhibit 12.
`
`Exhibit 5 (“Hellman patent”): U.S. Patent No. 4,658,093 to Martin E. Hellman.
`
`Exhibit 6 (“Wolfe patent”): U.S. Patent No. 4,796,220 to Everett W. Wolfe.
`
`Exhibit 7 (“Grundy patent”): U.S. Patent No. 5,291,598 to Gregory Grundy.
`
`Exhibit 8 (“Williams article”): Ross Williams, “A Painless Guide to CRC Error Detection
`
`Algorithms,” 33 pages, www.ross.net/crc/download/crc_v3.txt (August 19, 1993).
`
`III.
`
`SUMMARY OF SNQ [S AND PROPOSED REJECTIONS.
`
`The following table summarizes substantial new questions of patentability raised by the
`
`references cited above. Sections VI-X include detailed explanations of the pertinence and
`
`manner of applying the cited references against the claims.
`
`Claims 1-11 and 17-20 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over the Hellman patent.
`
`Hellman
`patent
`
`Appendix
`A
`
`Claims 1-11 and 17-20 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over the Hellman patent in view of
`the Wolfe patent.
`
`Hellman
`patent
`
`n/a (see
`SNQ 1)
`
`2
`
`3
`
`4
`
`
`
`Claims 1-20 are unpatentable under 35 U.S.C. § 102(e) as
`being anticipated by the Grundy patent.
`
`Claims 1-20 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over the Grundy patent in view of the Williams
`article.
`
`Grundy
`patent
`
`Grundy
`patent
`
`Appendix
`B
`
`n/a (see
`SNQ 3)
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-Ol
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`DATE OF DEPOSIT: January 22, 2010
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`patent.
`
`Claims 12-16 are unpatentable under 35 U.S.C. § l03(a) as
`being obvious over the Hellman patent in View of the Grundy
`
`Hellman
`patent
`
`Appendix
`C
`
`IV.
`
`OVERVIEW OF THE ‘216 PATENT.
`
`The ‘2l6 patent relates to “systems for software registration” and purports to describe
`
`multiple embodiments addressing intended uses of the software registration systems.
`
`A.
`
`Example Embodiments of the ‘216 Patent.
`
`This section summarizes the registration system presented in Various embodiments of the
`
`‘ 2 l 6 patent.
`
`Registration System. Figure 8 of the ‘2l6 patent shows an example registration system
`
`that includes a “local licensee location” and “remote registration database location.”
`
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`Reexamination Request for U.S. Pat. No. 5,490,216
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`Page 10 of 82
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`Figure 8 of the ‘216 patent.
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`ATTORNEY REFERENCE NO.: 6620-83067-01
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`As an overview, the remote location includes a “remote licensee unique I.D. generator” 67 that
`
`generates a registration number 66, and the local location includes a “local licensee unique I.D.
`
`generator” that generates a registration number 66. The local and remote unique I.D. generators
`
`use the same algorithm; if the inputs to each are the same, so too are the outputted registration
`
`numbers.
`
`‘216 patent, 3:3-9, 5:57-6:8, 7:14-22, 11:45-52. At the local location, a “mode
`
`switcher” 68 checks if the two registration numbers match and, if so, “allows execution on
`
`platform 31 ofthe full user program 39.” ‘216 patent, 11:63-65.
`
`The registration system allows executable digital data to run in use mode “if and only if
`
`an appropriate licensing procedure has been followed.” ‘216 patent, 5:50-51; see also 2:52-55.
`
`Otherwise, the executable digital data can be run only in a partly enabled or demonstration mode.
`
`‘216 patent, 4:30-43, 4:55-62.
`
`The registration process starts, for example, when a “prospective new user 11 inserts disk
`
`10” that includes software to be licensed.
`
`‘216 patent, 6:39-40.
`
`
`
`Figure 1 of the ‘216 patent.
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`As part of installation, the user is given “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).” ‘216 patent, 6:48-52. If the user chooses to register the
`
`software, a dialog box “prompts the user 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, 7:8-14. The user
`
`information “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.” ‘2 1 6 patent, 7: 15-19. The user
`
`information and serial number are then conveyed to the remote registration center.
`
`‘216 patent,
`
`6:53-7:35, 11:58-63, 12:66-13: 10. “As an integral part of the registration procedure, the
`
`prospective new user 11 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.” ‘216 patent, 7:22-27.
`
`Licensee Uni ue IDs “LUIDs” . The registration system uses LUIDs to determine
`
`whether the “appropriate licensing procedure has been followed.” ‘216 patent, Abstract, 2:54-
`
`55, 5:50-51. A LUID (alternatively called a registration number, enabling key or security key in
`
`the ‘216 patent; see 5:61-64, 7: 14-33) is a unique identifier that is associated with the intended
`
`licensee ofthe executable digital data.
`
`‘216 patent, 2:65-3:2, 3:65-4:5, 6: 16-22, 6:63-7:7.
`
`LUIDs are a feature of all claims of the ‘216 patent, though some claims use the term
`
`“registration key” or “security key” instead of “licensee unique ID.” While a LUID cannot be
`
`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-01
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`DATE OF DEPOSIT: January 22, 2010
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`based on platform identification information alone (see ‘216 patent, 1:57-2:7; see also Section V,
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`below), the LUID can, for example, be generated using the following as inputs:
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`“a serial number generated from information provided by the environment in
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`which the software to be protected is to run” (‘216 patent, 4:8-10; see also 3:18-
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`21, 4:6-1 1, 6:23-26, 7: 1-7, 9:54-10: 13, 12:3-19, 12:32-37, 12:59-61, Figure 9);
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`“customer information” personal to a prospective licensee, e.g., name, company,
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`address, date of birth, credit card number and telephone number (‘216 patent,
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`11:55; see also 3:50-53, 7:8-20, Figure 9);
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`“software product name” (‘216 patent, 11:54; see also 12:54-57, Figure 9); and
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`“previous user identification” (‘216 patent, 11:55, Figure 9).
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`Figure 9 of the ‘216 patent shows simple summation of such inputs to generate a
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`registration number (i.e., LUID)..
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`VAREABLE
`
`svsrzaa
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`KEY FORTEON
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`
`INFORMATION
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`
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`IIIIIIIIIII SW ~0-
`
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`;
`
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`
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`
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`
`PRQDUCT NAME
`
`55
`
`INFORMATSDN
`
`CUSTOMER
`
`22
`'/ PREVIOUS USER
`IDENYIFICATSON
`
`:3 5:
`=
`
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`NUMBER
`
`;
`
`Figure 9 of the ‘216 patent.
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`Reexamination Request for U.S. Pat. No. 5,490,216
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`Page 13 of 82
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`PETITIONERS EX. 1013
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`PETITIONERS EX. 1013
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`ATTORNEY REFERENCE NO.: 6620-83067-O1
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`DATE OF DEPOSIT: January 22, 2010
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`Same Algorithm Used to Generate LUIDs Locally and Remotely. The “registration
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`number algorithm” used locally to generate a local LUID is also used remotely (at the location of
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`the registration authority, e. g., software publishing company) to generate a remote LUID.
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`‘216
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`patent, 3:3-9, 5:57-6:8, 7: 14-22, 11:45-52. To generate LUIDs, the registration number
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`algorithm uses (in software implementations) a summation algorithm which “combines by
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`addition” or (in hardware implementations) a “summer.” ‘216 patent, Figure 9, 4:6-11, 7: 14-20,
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`11:53-57, 12:61-65, 13:4-10. Use of the same algorithm to generate LUIDs locally and remotely
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`is a feature of all claims of the ‘216 patent, but the language used to express this feature Varies
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`between claims.
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`Matching the Local and Remote LUIDs. The remote registration authority provides the
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`remote LUID to the local licensee location for comparison to the local LUID.
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`‘216 patent, 7:36-
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`38, 13:11-17. The system “permits use of the digital data in the use mode on the platform only if
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`a licensee unique ID generated by the local licensee unique ID generating means has matched a
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`licensee unique ID generated by the remote licensee unique ID generating means.” ‘216 patent,
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`3:28-32; see also 6:12-14, 7:39-50, 11:58-65. A hardware comparator (in hardware
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`implementations) or software logic (in software implementations) checks whether the local
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`LUID matches the remote LUID, i.e., whether they are the same.
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`‘216 patent, 11:58-65, 13:11-
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`17.
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`Checking that Information Has Been Entered Correctly. The LUIDs can also be “used
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`for the purposes of checking by the registration authority that the information unique to the user
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`is correctly entered at the time that the security key is generated by the registration means.” ‘216
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`patent, 4:14-17; see also 7:39-50, 7:61-64. If the local LUID and remote LUID do not match,
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`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-O1
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`DATE OF DEPOSIT: January 22, 2010
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`the details of the information conveyed from the user to the registration authority can be
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`checked. Id. Claim 12-16 of the ‘216 patent are directed to a registration system “used for the
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`purposes of checking by the registration authority that the information unique to the user is
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`correctly entered.” ‘216 patent, claim 12.
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`Comparisons in Subsequent Execution. For a subsequent use of the executable digital
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`data, “the mode switching means will permit the digital data to run in the use mode in subsequent
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`execution of the digital data on the platform only if the platform unique ID has not changed.”
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`‘216 patent, 3:33-37; see also 4:18-29. LUIDs are not generated or checked before each
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`subsequent use of the digital data.
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`‘216 patent, 8:2-38. Rather, the registration routine checks
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`for changes in the details of the operating environment. Id. “[A] comparison is made by the
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`registration routine between what is stored in the key file and the environment to determine
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`whether a change has taken place to the environment as compared with what is stored in the key
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`file. If no change is detected, then the protected application is permitted to run normally.” ‘216
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`patent, 9:2-7.
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`B.
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`Prosecution History.
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`The application that issued as the ‘216 patent claims priority to two Australian patent
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`applications. The U.S. application went through several rounds of Office actions and
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`amendments before allowance.
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`Australian Priority Applications. The Applicant filed two “provisional specifications”
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`with the Australian Patent Office on September 21 and October 26, 1992, respectively. Copies
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`of the two Australian applications are enclosed as Exhibits 3 and 4. These Australian priority
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`applications did not use many of the claim terms later appearing in the claims of the ‘216 patent.
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`The Australian priority applications lacked any counterparts to Figs. 5-10 of the ‘216 patent,
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`lacked the “hardware implementation” of the ‘216 patent’s “seventh embodiment,” and lacked
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`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-01
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`DATE OF DEPOSIT: January 22, 2010
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`any reference to summing or adding input Values for generating the licensee unique ID.
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`In a declaration signed January 27, 1994, the Applicant claimed “priority” to both of
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`these applications. The Examiner acknowledged this priority claim in an Office action dated
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`June 24, 1994, and again in the Notice of Allowability dated August 8, 1995.
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`U.S. Patent Application No. 08/ 124,718 As Filed. On September 21, 1993, the Applicant
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`filed his application with 30 claims directed to: (a) “registration system” (claims 1-12), (b)
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`“security routine or registration system” (claims 13-18), (c) “remote registration station” (claims
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`25, 30), (d) “media or transmission medium” (claims 27-29), (e) “digital data incorporating
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`registration code” (claims 22-24), (1) method of providing [means] (claims 19-21), and (g)
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`method of operating [means] (claim 26).
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`Office Action Mailed June 24 1994. In an Office action mailed June 24, 1994, the
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`Examiner rejected the digital data and media claims under 35 U.S.C. § 101 and rejected some
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`claims for indefiniteness. The Examiner rejected claims 1-30 under 35 U.S.C. § 102(e) as being
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`anticipated by U.S. Patent No. 5,222,133 to Chou et al (“Chou patent”).
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`Amendment Dated December 27 1994. In an amendment dated December 27, 1994, the
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`Applicant cancelled some claims and submitted remarks distinguishing the Chou patent. The
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`Applicant also cited U.S. Patent No. 5,291,598 to Grundy (“Grundy patent”) and submitted
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`remarks purporting to distinguish it. The Applicant argued that three aspects of the claimed
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`“invention” allegedly distinguished the Grundy patent:
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`(1) simple comparison or matching of locally and remotely generated LUIDs,
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`(2) use of the same LUID-generating algorithm locally and remotely, and
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`(3) input of the same information to the local and remote LUID-generating algorithms.
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`Specifically, the Applicant argued:
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`Reexamination Request for U.S. Pat. No. 5,490,216
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`ATTORNEY REFERENCE NO.: 6620-83067-01
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`DATE OF DEPOSIT: January 22, 2010
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`The key to the present invention as claimed in Claim 1, for example, is that a
`“licensee unique ID” generated by a local licensee unique ID generating means
`has matched a licensee unique ID generated by a remote licensee unique 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
`identifying information input into both the local licensee unique ID generating
`means and the remote licensee unique 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.
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`Amendment dated December 27, 1994, page 4, emphasis added.
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`Office Action Mailed March 30 1995. The Examiner initially was unconvinced by the
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`Applicant’s attempts to distinguish the Grundy patent. In the Office action mailed March 30,
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`1995, the Examiner rejected the pending claims under 35 U.S.C. § 103 over the Grundy patent,
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`explaining:
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`Grundy teaches a registration system for licensing execution of digital data in a
`use mode (column 4, lines 27-34), the system including local licensee unique ID
`generating means (Get User Data Module) and remote licensee unique ID
`generating means (registration code decoded to retrieve User Data and converted
`to authorization code - column 5, lines 5-7), the system further including mode
`switching means (column 5, lines 10-12) which permits use of the digital data
`only if the licensee unique ID (User Data stored 301) has matched licensee unique
`ID generated by the remote licensee unique ID generating means (User data
`decoded from authorization code 318)
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`The difference between Grundy and