UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`UBISOFT, INC., ZEBRA TECHNOLOGIES CORPORATION, AND
`CAMBIUM LEARNING GROUP, INC.
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`____________
`
`Case No. IPR2016-00414
`Patent 5,490,216
` ____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF U.S. PATENT NO. 5,490,216
`
`
`
`
`
`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`
`TABLE OF CONTENTS
`
`I. INTRODUCTION ............................................................................................. 1
`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .................................................................................................................... 1
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................ 1
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ............................................................................................................ 1
`1. Level of a Person Having Ordinary Skill in the Art .................................... 2
`B. CLAIM CONSTRUCTION .................................................................................... 2
`1. Non-Means-Plus Function Terms ................................................................ 3
`2. Construction of Means-Plus-Function Terms .............................................. 7
`III. OVERVIEW OF THE ‘216 PATENT .......................................................... 9
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ‘216 PATENT .................... 9
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ‘216 PATENT ................... 10
`1. Original Prosecution .................................................................................. 10
`2. First Ex Parte Reexamination Proceeding ................................................. 12
`3. Second ex parte Reexamination Proceeding .............................................. 14
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ........................................ 16
`A. WOLFE IN VIEW OF EHLMANN RENDERS CLAIMS 1-5, 7-11 AND 17-20
`OBVIOUS UNDER 35 U.S.C. § 103(A) ................................................................... 16
`B. LOGAN ANTICIPATES CLAIMS 1, 7-11, 19 AND 20 UNDER AT LEAST 35 U.S.C.
`§§ 102(A) ............................................................................................................. 39
`C. LOGAN RENDERS CLAIMS 10 AND 11 OBVIOUS UNDER 35 U.S.C. § 103(A) .. 50
`V. SECONDARY CONSIDERATIONS ........................................................... 51
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 51
`A. REAL PARTY-IN-INTEREST AND RELATED MATTERS ..................................... 51
`B. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ..................... 52
`C. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 .............................................. 52
`VII. CONCLUSION ............................................................................................ 53
`
`
`
` 2
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`

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`I.
`
`INTRODUCTION
`
`IPR2016-00414
`U.S. Patent No. 5,490,216
`
`
`Ubisoft, Inc., Zebra Technologies Corp., and Cambium Learning Group, Inc.
`
`(“Petitioners”) requests Inter Partes Review (“IPR”) of claims 1-5, 7-11 and 17-20
`
`of U.S. Patent No. 5,490,216 (“the ‘216 Patent”) issued on February 6, 1996.
`
`Exhibit 1001, ‘216 Patent.
`
`II. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the ‘216 Patent is available for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the claims of the ‘216
`
`Patent. Specifically, Petitioners state: (1) Petitioners are not the owner of the ‘216
`
`Patent; (2) Petitioners have not filed a civil action challenging the validity of any
`
`claim of the ‘216 Patent; (3) this Petition is timely filed pursuant to 37 C.F.R.
`
`§42.122(b); and (4) this Petition is filed more than nine months after the ‘216
`
`Patent issued, and the ‘216 Patent was not the subject of a post-grant review.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`In view of the prior art, evidence, and claims charts, claims 1-5, 7-11 and
`
`17-20 of the ‘216 Patent are unpatentable and should be cancelled. 37 C.F.R.
`
`§ 42.104(b)(1).
`
`Proposed Statutory Rejections for the ‘216 Patent
`Claims 1-5, 7-11, and 17-20: Obvious under 35 U.S.C. §103(a) over U.S. Patent
`
`
`
` 1
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`No. 4,796,220 to Wolfe (“Wolfe”) in view of Ehlmann, “Designing Software to be
`Used Up and Protecting it from Pirates,” ACM SIGSMALL/PC Notes, vol. 11, iss.
`3 (Aug. 1985) (“Ehlmann”) [Exs. 1002, 1003]
`
`Claims 1, 7-11, and 19-20: Anticipated under 35 U.S.C. §§102(e) by US 5,199,066
`to Logan (“Logan”) [Ex. 1004]
`
`Claims 10 and 11: Obvious under 35 U.S.C. §103(a) over Logan [Ex. 1004]
`
`
`1.
`
`Level of a Person Having Ordinary Skill in the Art
`
`A person of ordinary skill in the field of software registration systems in
`
`1992 would have a Bachelor’s Degree or equivalent, in Electrical Engineering or
`
`Computer Science, or one to two years of experience in software development or
`
`the equivalent work experience. Ex. 1006, Madisetti Decl., at ¶ 12.
`
`B. Claim Construction
`
`The ‘216 Patent expired on September 21, 2013, and is therefore not subject
`
`to amendment. For purposes of this Petition, the claims are construed pursuant to
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (words of a claim
`
`“are generally given their ordinary and customary meaning” as understood by a
`
`person of ordinary skill in the art in question at the time of the invention).1 Further,
`
`
`1 The claim construction analysis is not, and should not be viewed as, a concession
`
`by Petitioner as to the proper scope of any claim term in any litigation. These
`
`assumptions are not a waiver of any argument in any litigation or this proceeding
`
`
`
` 2
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`the terms of the challenged claims have been construed in the United States
`
`District Court for the District of Rhode Island, Uniloc USA, Inc. et al. v. Microsoft
`
`Corp., No. 03-CV0440 (WES) (“the Microsoft Litigation”). Ex. 1007, District Ct.
`
`CC Order. For purposes of this Petition and except where noted, Petitioner adopts
`
`the Court’s claim constructions.
`
`1.
`
`Non-Means-Plus Function Terms
`
`a)
`
`“Licensee Unique ID” (Claims 1, 19, and 20), “Security Key” (Claims 12
`and 13), and “Enabling Key” (Claim 17)
`
`The District Court construed these terms to mean “a unique identifier
`
`associated with a licensee.” Id. at 9-21. The Court found that licensee unique
`
`ID/security key/enabling key does not require personal information about the user,
`
`and that the ‘216 Patent contemplates using vendor-supplied information to create
`
`the licensee unique ID: “[T]he Court finds language in the specification supporting
`
`the notion that vendor information may indeed be an input to creating the licensee
`
`unique ID.” Id. at 12-13 (citing Ex. 1001 at 11:53-56, 12:54-57, 12:61-64, Figs. 4,
`
`9, 10). The Court also found: “[F]igure 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.” Ex. 1007, District Ct. CC Order
`
`
`that claim terms in the ‘216 Patent are indefinite or otherwise invalid, should be
`
`construed differently, or that additional claim terms require construction.
`
`
`
` 3
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`at 12. The Federal Circuit agreed, stating: “[S]ome of these very same
`
`embodiments countenance the licensee unique ID being generated from inputs
`
`other than personally identifiable information, so long as the input value is unique
`
`and non-platform-related.” Ex. 1008, Federal Circuit Opinion dated Aug. 7, 2008
`
`at 10 (citing Ex. 1001 at 6:18-22, 6:23-66, 7:9-10, 8:59-65, 12:54-57, 12:61-64,
`
`Fig. 4)(emphasis original). In summarizing the ‘216 invention, the Federal Circuit
`
`also stated: “user information […] may include a software serial number and/or
`
`name and address information.” Ex. 1005, Federal Circuit Opinion dated Jan. 4,
`
`2011 at 3.
`
`Declining to construe the term “unique” as “one-of-a-kind,” the District
`
`Court found: “[t]he ‘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.” Ex. 1007, District Ct. CC Order
`
`at 11-12 (citing Ex. 1001 at Abstract, 6:23-26).
`
`b)
`
`“information uniquely descriptive of an intending licensee” (Claim 2)
`
`The District Court construed these terms to mean “information that is
`
`uniquely associated with a person who intends to become a licensee so as to access
`
`full functionality of the digital data.” Ex. 1007, District Ct. CC Order at 22-24.
`
`The claim construction analysis explicitly rejected “one-of-a-kind information that
`
`describes/identifies a person” when construing this term. Id. at 22.
`
`
`
` 4
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`

`
`c)
`
` “algorithm” (Claims 1, 19, 20)
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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`The District Court construed this term to mean “a set of instructions that can
`
`be followed to carry out a particular task.” Id. at 29-30.
`
`d)
`
`“includes the algorithm utilized by said local licensee unique ID generating
`means to produce said licensee unique ID” (Claims 1, 19, 20)
`
`The District Court construed this phrase to mean “includes the identical
`
`algorithm used by the local licensee unique ID generating means to produce the
`
`licensee unique ID.” Id. at 30-32.
`
`e)
`
`“generated by a third party means of operation of a duplicate copy of said
`registration key generating means” (Claim 17)
`
`The District Court construed this phrase to mean “generated by a third
`
`party’s use of a duplicate copy of the registration key generating means.” Id. at 33-
`
`36.
`
`f)
`
`“use mode” (Claims 1, 7, 19, 20), “fully enabled mode” (Claim 17)
`
`The District Court construed these terms to mean “a mode/version that
`
`allows full use of the digital data or software in accordance with the license.” Id. at
`
`36-39.
`
`g)
`
`“partly enabled or demonstration mode” (Claim 17)
`
`The District Court construed these terms to mean “a mode that allows partial
`
`use of the digital data or software.” Id. at 36-40.
`
`h)
`
`“has matched” (Claims 1, 17, 19, 20)
`
`The District Court construed this term to mean “a comparison between the
`
`
`
` 5
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`locally generated licensee unique ID/registration key and the remotely generated
`
`licensee unique ID/enabling key shows that the two are the same.” Id. at 44-46.
`
`i)
`
`“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)
`
`The District Court construed this term to mean “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.” Id. at 47-49.
`
`j)
`
`“registration system” (Claims 1, 19, 20)
`
`The District Court construed this term to mean “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.” Id. at 49-51.
`
`k)
`
`“provided to said mode-switching means by said intending user” (Claim 17)
`
`The District Court construed this term to mean “provided to the mode-
`
`switching means by the person who intends to become a licensee.” Id. at 51-52.
`
`l)
`
`“communicated to said intending user” (Claim 17)
`
`The District Court construed this term to mean “communicated to the person
`
`who intends to become a licensee.” Id. at 51-52.
`
`
`
` 6
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`

`
`Construction of Means-Plus-Function Terms
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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`
`2.
`
`Claims 1, 7, 17, 19, and 20 include recitations in means-plus-function form.
`
`Petitioners propose that each of the below phrases is governed by 35 U.S.C. § 112,
`
`¶6 (now 35 U.S.C. § 112(f)):
`
`a)
`
`“local licensee unique ID generating means” (Claims 1, 19, 20), “remote
`licensee unique ID generating means” (Claims 1, 19, 20), and “registration
`key generating means” (Claim 17)
`
`The District Court in the Microsoft Litigation determined that the function is
`
`“to generate a local or remote licensee unique ID” and that the structure for
`
`performing the function is “a summation algorithm or a summer and equivalents
`
`thereof.” Ex. 1007, District Ct. CC Order at 25-28. The Court specifically
`
`concluded that the only algorithm specified is found at 11:53-56 and describes
`
`“combin[ing] by addition the serial number 50 with the software product name 64
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`and customer information 65 and previous user identification 22 to provide
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`registration number 66.” Id. at 27. Similarly, the Court found the only hardware
`
`component disclosed for performing the function is a “summer.” Id. at 27 (citing
`
`Ex. 1001 at 12:62-65).
`
`On appeal, the Federal Circuit elaborated and noted that the ‘216 patent
`
`algorithm “is not limited to simple addition in the colloquial sense of adding
`
`numbers
`
`together and nothing more” because
`
`the described embodiment
`
`“necessarily incorporates an initial step of converting the information into a
`
`
`
` 7
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`common format to be added, which requires more than simple addition.” Ex. 1005,
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`Federal Circuit Opinion dated Jan. 4, 2011 at 20 (citing Ex. 1001 at 11:53-56).
`
`During the First ex parte Reexamination (discussed in Section III.B.2
`
`below), the PTO construed the terms “local licensee unique ID generating means”
`
`and “registration key generating means” as “a hardware summer” that may be
`
`implemented in software. Ex. 1010, Reexam 90/010831, 9/28/10 Office Action, p.
`
`5 (citing Ex. 1001 at 12:62-65, 12:51-61, 13:42-48, Fig. 10). The PTO similarly
`
`construed “remote licensee unique ID generating means.” Id.
`
`b)
`
`“mode switching means” (Claims 1, 19, 20) and “mode-switching means”
`(Claim 17)
`
`The District Court determined that the 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” and that the structure for
`
`performing the function is “program code, which performs a comparison of two
`
`numbers or a comparator and equivalents thereof.” Ex. 1007, District Ct. CC
`
`Order at 41-44.
`
`c)
`
`“platform unique ID generating means” (Claims 7-9)
`
`The District Court determined that the function is “to generate a platform
`
`unique ID” and the structure for performing the function is “a summation
`
`algorithm or a summer and equivalents thereof.” Ex. 1007, District Ct. CC Order
`
`at 58-61. During the First ex parte Reexam, the PTO construed “platform unique
`
`
`
` 8
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`ID generating means” as “code for creating the platform unique ID (see column 5,
`
`lines 57-64), read from a digital code reading device (see column 12, lines 46-50).”
`
`Ex. 1010, Reexam 90/010831, 9/28/10 Office Action, p. 5.
`
`In fact, there is no structure disclosed in the ‘216 Patent for performing the
`
`function of generating “a platform unique ID.” Ex. 1001, ‘216 Patent, 3:33-37,
`
`3:54-62, 11:66-12:2, Fig. 8. Petitioners therefore submit that neither construction is
`
`supported by the specification, but demonstrate that both would be unpatentable
`
`below.
`
`III. OVERVIEW OF THE ‘216 PATENT
`A. Description of the Alleged Invention of the ‘216 Patent
`
`The ‘216 Patent is directed to a software registration system that allows
`
`software to run without restrictions (in “use mode”) only if the system determines
`
`that the software installation is legitimate. Ex. 1001 at Abstract. In one disclosed
`
`embodiment, a user intending to use the software in “use mode” enters certain user
`
`information when prompted, which may include a software serial number and/or
`
`name and address information. Id. at Fig. 4. An algorithm on the user’s computer
`
`(a “local licensee unique ID generating means”) then combines the inputted
`
`information into “a registration number unique to an intending licensee” (a “local
`
`licensee unique ID”). Id. at Abstract, 5:61-67. The user information is also sent to
`
`the vendor’s system, which performs the identical algorithm (a “remote licensee
`
`
`
` 9
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`unique ID generating means”) to create a “remote licensee unique ID” for the user.
`
`Id. at Abstract, 6:1-8. A “mode switching means” compares the local and remote
`
`licensee unique IDs and, if they match, the program enters into “use mode.” Id. at
`
`4:49-54, 13:37-41. If they do not match, the program enters into “demo mode,”
`
`wherein certain features are disabled. Id. The ‘216 Patent claims priority to two
`
`Australian applications: Australian Provisional No. PL4842, filed September 21,
`
`1992 (“Parent 4842”), and Australian Provisional No. PL5542, filed October 26,
`
`1992 (“Parent 5524”). Ex. 1023, Parent 4842 and Ex. 1024, Parent 5524.
`
`B.
`
`Summary of the Prosecution History of the ‘216 Patent
`1. Original Prosecution
`The ‘216 Patent was filed on September 21, 1993 with 30 initial claims. See
`
`Ex. 1011, File History at As-Filed Application. On June 24, 1994, the Examiner
`
`rejected all claims under 35 U.S.C. §102(e) as anticipated by U.S. Patent 5,222,133
`
`(“Chou”). In response, Patent Owner argued that its uniqueness comes from user
`
`provided identification details that are checked by a remote matching algorithm,
`
`which is not taught by Chou. Id. at 12/27/1994 Response, p. 3 (emphasis original).
`
`Patent Owner also submitted an IDS with one reference, U.S. Patent 5,291,598
`
`(“Grundy”), and stated: “Because additional information is added at the remote
`
`computer in Grundy, it follows automatically that simple comparison or match of
`
`
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` 10
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`

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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`the registration code derived from the local computer and the authorization code
`
`derived from the remote computer is not possible.” Id. at pp. 4-5.
`
`On March 30, 1995, the Examiner rejected all pending claims under 35
`
`U.S.C. §103 over Grundy. Id. at 3/30/1995 Office Action, p. 2. The Examiner
`
`noted: “Applicant argues that the difference between Grundy and the claims is the
`
`presence of additional data (the owner identification number) in the authorization
`
`code. 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.” Id. at p.
`
`3.
`
`On July 5, 1995, Patent Owner canceled all pending claims and added new
`
`claims 31-50. Id. at 7/5/1995 Amendment, pp. 1-5. Patent Owner argued that the
`
`claims include two distinguishing limitations over Grundy: 1) the licensee unique
`
`ID is generated locally, and 2) 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. Id. at 6. Patent Owner also stated: “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 […].” Id. at 7. On
`
`August 8, 1995, the USPTO mailed a Notice of Allowance and the patent issued on
`
`February 6, 1996. The ‘216 Patent expired on September 21, 2013.
`
`
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` 11
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`

`
`First Ex Parte Reexamination Proceeding
`
`2.
`On April 9, 2010, the PTO granted an ex parte reexamination request and
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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`determined that U.S. Patent 4,658,093 (“Hellman”) raised a substantial new
`
`question of patentability. Ex. 1012, Reexam 90/010831, Order Granting Request,
`
`pp. 8-9; see also Ex. 1013, Reexam 90/01083,1 Request, pp. 52-75. The PTO
`
`subsequently issued an Office Action rejecting claims 1-20 as obvious over
`
`Hellman in view of Grundy. Ex. 1010. Reexam 90/010831, 9/28/2010 Office
`
`Action, pp. 6-14.
`
`On November 29, 2010, Patent Owner responded, arguing that “Hellman
`
`fails to teach or suggest a unique identifier that is associated with a licensee”
`
`because “t]he ‘request’ and ‘authorization’ [of Hellman] are based upon
`
`information” that is not unique to the licensee. Ex. 1014, Reexam 90/010831,
`
`11/29/2010 Response, p. 18.
`
`On January 18, 2011, the PTO issued an Office Action rejecting claims 19
`
`and 20 as anticipated by Hellman, claims 1, 7-11, 19 and 20 as obvious over
`
`Hellman, and claims 1-20 as obvious over Hellman in view of Grundy. Ex. 1015,
`
`Reexam 90/010831, 1/18/2011 Office Action, pp. 8-21. The PTO found that “the
`
`[Hellman] hash function used to generate the ID produces a number that is so
`
`unlikely to be reproduced independently that it is at least as unique [as] the IDs
`
`from the disclosure of the ‘216 patent, see column 6, lines 31-50.” Id. at p. 9. With
`
`
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` 12
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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`respect to claims 10 and 11, the PTO noted: “Hellman does not explicitly discuss
`
`the architecture of the computer on which the protected software is being executed;
`
`however, the use of operating systems for such deployments is nearly universal and
`
`it is therefore implicit for such computers to have operating systems upon which
`
`such user applications are run.” Id. at p. 13.
`
`On March 18, 2011, Patent Owner argued that the Federal Circuit found that
`
`Hellman did not teach a “licensee unique ID” and stated that “the claimed ‘licensee
`
`unique ID’ must be ‘a unique identifier associated with a licensee.’ […] To
`
`accomplish this, there must be some input to the means for generating the claims
`
`‘licensee unique ID’ that characterizes the intended user. Hellman’s cryptographic
`
`function generator has no such input and […] its output is solely descriptive of the
`
`licensee’s computer.” Ex 1016, Reexam 90/010831, 3/18/2011 Response, pp. 14-
`
`15. Patent Owner also stated: “Hellman’s authorization A and check value C are
`
`limited to identification of the base unit or the platform on which the software it to
`
`be run.” Id. at p. 20.
`
`On August 5, 2011, the PTO issued a Notice of Intent to Issue an Ex Parte
`
`Reexamination Certificate confirming claims 1-20. Ex. 1017, Reexam 90/010831,
`
`8/5/2011 Notice of Intent. The PTO stated: “Where there exists a final decision by
`
`the Court of Appeals for the Federal Circuit regarding construction of claims, an
`
`interpretation is not reasonable where it is inconsistent with that decision. The
`
`
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` 13
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`IPR2016-00414
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`Patent Owner has persuasively argued that, based on such decisions regarding the
`
`‘216 patent, Hellman cannot be reasonably construed as teaching to a local licensee
`
`unique ID generating means or a remote licensee unique ID generating means.” Id.
`
`at p. 5. The PTO further stated: “The licensee unique ID generated by the means
`
`recited in each of the claims must be derived from at least [one] piece of
`
`information that is specific to the user, such as name, billing information, or
`
`product information unique to the instantiation entered by the user. The
`
`information cannot be specific to the computer or independently generated by the
`
`computer.” Id. The PTO also stated: “[T]he means itself must be an algorithm that,
`
`at least to some extent, must comprise a summation.” Id. at p. 6.
`
`Second ex parte Reexamination Proceeding
`
`3.
`The PTO granted a second ex parte reexamination request and determined
`
`that U.S. Patent 4,599,489 (“Cargile”) and International Pub. WO 92/09160
`
`(“Waite”) raised substantial new questions of patentability as to claims 1-11 and
`
`17-20. Ex. 1018, Reexam 90/012179, Order Granting Request, pp. 8-12; see also
`
`Ex. 1019, Reexam 90/012179, Request, pp. 35-97. The PTO then issued an Office
`
`Action confirming claims 7-9 and rejecting claims 1-6, 10-11, and 17-20 over
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`Cargile and Waite. Ex. 1020, Reexam 90/012179, 9/20/2012 Office Action.
`
`On November 20, 2012, Patent Owner argued that the Cargile “bit pattern,”
`
`which is characterized as being “unique to each user” doesn’t meet the
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`U.S. Patent No. 5,490,216
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`requirements for a licensee unique ID because “the bit pattern is … unique only to
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`the device not to the user.” Ex. 1021, Reexam 90/012179, 11/20/2012 Response,
`
`pp. 14-15; see also id. at pp. 30-31. Patent Owner further stated: “[T]he bit pattern
`
`being merely specific to the device is, according to the Reasons for Confirmation, a
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`disqualifying characteristic for a ‘licensee unique ID’.” Id. at p. 15. Patent Owner
`
`also argued that Cargile fails to teach “mode switching means” as defined in the
`
`‘216 patent. Id. at p. 26-27.
`
`On March 8, 2013, the PTO issued a Notice of Intent to Issue an Ex Parte
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`Reexamination Certificate confirming claims 1-11 and 17-20. Ex. 1022, Reexam
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`90/012179, 3/8/2013 Notice of Intent. The PTO specifically found that Cargile
`
`failed to teach a mode switching means, stating: “Cargile discloses a comparator
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`[that] compares two passcodes to grant or deny access to the user. The comparator
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`does not switch (e.g., [‘216 patent at] comparator 68, Fig. 8) between usable modes
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`(i.e., demo and full program modes). Cargile’s comparator either grants access or
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`terminates the session […].” Id. at 7. The PTO also found: “[R]ather than
`
`generating a unique ID from user personal input data, the key device [of Cargile]
`
`inputs a pre-loaded number and a date to generate a password.” Id. at 11. The
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`certificate for the Second ex parte Reexamination issued on March 27, 2013.
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`IV. THERE
`IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`The following prior art references disclose each limitation of the Challenged
`
`Claims. As such, the Challenged Claims are unpatentable. Included in the claim
`
`charts below are exemplary citations to the prior art references.
`
`A. Wolfe in view of Ehlmann Renders Claims 1-5, 7-11 and 17-20
`Obvious Under 35 U.S.C. § 103(a)
`
`Wolfe, Ehlmann, and the ‘216 Patent each relate to software registration
`
`systems for ensuring that software is licensed before the software can be operated
`
`in a full use mode. See, e.g., Ex. 1001 at 1:9-11, 2:52-55; Ex. 1002, Wolfe at 1:6-
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`13, 2:53-68, Abstract; Ex. 1003, Ehlmann at 10, 14. Wolfe and Ehlmann each
`
`disclose systems for ensuring that copied software is properly registered. See, e.g.,
`
`Ex. 1002, Wolfe at Abstract, 2:53-68, 4:40-48; Ex. 1003, Ehlmann at 10-13. Wolfe
`
`discloses a registration procedure where a user is prompted to register protected
`
`software by providing the software serial number and a configuration code that is
`
`generated based on the configuration of the user’s machine to a central computer.
`
`Ex. 1002, Wolfe at 4:40-48, 5:11-25. The software serial number is a number
`
`“previously assigned by the licensor or seller of the program.” Id. at 4:49-51. The
`
`central computer then generates a permission code based on the hardware
`
`configuration variables that are part of the configuration code. Id. at 6:4-33, 7:24-
`
`41, Fig. 2. For example, the algorithm for calculating the permission code could
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`be: Permission Code = (RAM Size + Hard Disk Size) * % Free Space. Id. at 7:35-
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`IPR2016-00414
`U.S. Patent No. 5,490,216
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`38. The permission code is then communicated to the user, the user enters the code
`
`into the computer and the user’s computer “recreates the generation of the
`
`permission code based on the hardware and can compare the internally generated
`
`code to the entered permission code.” Id. at 5:38-51; also 7:42-56, 8:45-65. If the
`
`locally and remotely generated permission codes match, execution of the software
`
`is allowed; otherwise, execution is prevented. Id. Further, on each subsequent use
`
`of the protected software, if the locally generated permission code does not match
`
`the stored permission code, access to the protected software is prevented and the
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`user is provided with an opportunity to obtain a new permission code from the
`
`central computer. Id. at 8:50-68, 7:57-8:12.
`
`Ehlmann similarly discloses a software registration procedure where a user
`
`is required to enter a “validation password” received from the software vendor
`
`after a specified number of uses, where the obtained validation password must
`
`match a password generated locally by the software using the “same computation.”
`
`Ex. 1003, Ehlmann at 9, 13-14, Fig. 1. Ehlmann specifically discloses that the
`
`validation password is based on a unique twelve-digit number, where the first six
`
`digits of the number are an assigned and unique software product numeric ID (i.e.,
`
`value that is unique and non-platform-related and is therefore a unique identifier
`
`associated with a licensee), the next two digits are a numeric code which measures
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`the “incremental use” of the software, and the final four digits represent a number
`
`that characterizes how the software has been used. Id. at 12, 13-14. Ehlmann
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`discloses providing the twelve-digit number to the software vendor and receiving
`
`the validation password from the vendor via postcard or telephone. Id. at 12, 14,
`
`Figs. 1, 2.
`
`Therefore, upon reading the disclosure of Ehlmann, one of ordinary skill in
`
`the art would have recognized that modifying Wolfe to generate “permission
`
`codes” based, in part, on information including a product ID number, as taught by
`
`Ehlmann, in addition to machine-specific configuration variables, as taught by
`
`Wolfe, is nothing more than simple substitution of one variable in a mathematical
`
`formula for another. Ex. 1006, Madisetti Decl., at ¶ 36. Wolfe discloses that the
`
`vendor-assigned software serial number (akin to Ehlmann’s unique Product No.) is
`
`communicated to the central computer. Ex. 1002, Wolfe at 4:40-48, 5:11-25.
`
`Simply substituting a vendor-assigned product number for another number in the
`
`basic mathematical formula disclosed in Wolfe would have yielded predictable
`
`results; namely, a number that would be hard for a user to guess without knowing
`
`the specific formula used to generate that number. Ex. 1006, Madisetti Decl., at ¶¶
`
`35-37, 39, 40. Using the serial number instead of one of the hardware
`
`configuration variables in the simple mathematical formula for calculating a
`
`permission code is nothing more than a design choice. Id. at ¶ 37.
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`A skilled artisan would have also recognized that allowing users to try a
`
`product before obtaining a license and to provide “exhaustible software”, as taught
`
`by Ehlmann, would be beneficial. Id. at ¶¶ 35, 36, 38. Ehlmann discloses
`
`advantages such as price, the ability to receive new features and bug fixes
`
`whenever incremental upgrades are purchased, and allowing users to start using the
`
`software prior to purchase. Ex. 1003, Ehlmann at 9, 10. Thus, it would have been
`
`natural and an application of nothing more than ordinary skill and common sense
`
`for a skilled artisan to provide “exhaustible software” as taught by Ehlmann with
`
`the software registration system of Wolfe. Ex. 1006, Madisetti Decl., at ¶ 39.
`
`Indeed, such a modification would have yielded predictable results without undue
`
`experimentation. Id. at ¶ 40. As is evident from the descriptions above, Wolfe and
`
`Ehlmann are in the same field of endeavor as the ‘216 Patent – software
`
`registration systems for ensuring that software is properly licensed – and are each,
`
`therefore, analogous to the ‘216 Patent. See e.g., Ex. 1001 at 1:5-9.
`
`A
`
`for
`
`Claim 1
`1[a].
`registration
`system
`licensing
`of
`execution
`digital data in a
`use mode, said
`digital
`data
`executable on a
`
`Obvious over Wolfe (Ex. 1002) in view of Ehlmann (Ex.
`1003)
`Wolfe discloses a software registration system that allows
`software to run in a use mode on a user’s computer if and only
`if the user has obtained a valid permission code from a central
`computer.
`“In accordance with one aspect of this invention, there is
`provided a method of controlling the use of