|lllllllllllllllllllll||||||||||l||||lllllllllll||||||1|||||||||||l|ll|1|ll
`U8006185681C1
`
`(12) EX PARTE REEXAMINATION CERTIFICATE (5378th)
`0
`United States Patent
`(10) Number:
`US 6,185,681 C1
`Zizzi
`(45) Certificate Issued:
`May 23, 2006
`
`(54) METHOD OF TRANSPARENT ENCRYPTION
`AND DECRYPTION FOR AN ELECTRONIC
`DOCUMENT MANAGEMENT SYSTEM
`.
`-
`-
`-
`Inventor' Stephen 2'22" [mm CA (US)
`.
`.
`.
`(73) Asstgnee: Maz Technologies, lnc.. lrv1ne. CA
`(US)
`
`(75)
`
`_
`_
`Reexamination Request:
`No. 90/006529. Feb. 10. 2003
`
`Reexamination Certificate for:
`patent No.:
`6,135,631
`Issued:
`Feb. 6, 2001
`'
`.
`1!:ng N0"
`32:07:,1199198
`'6 ‘
`y ’
`1m. CI.
`153;; 33],;
`
`9
`$3333};
`"
`'
`
`(5])
`
`........................................ 713/1651713/172
`(52) US. Cl.
`(58) Field 01' Classification Search ....................... None
`Sec application file for complete search history.
`
`364/200
`
`4,780,905 A
`................... 380/44
`10/1988 Cruts et :11.
`4.807.287 A
`.. 380/4
`2/1989 Tucker et al.
`
`4.893.338 A
`......................... 380/25
`1/1990 Pastor
`4.893.340 A
`1/1990 Lubarsky el :11.
`............. 380/50
`4.907.228 A
`3/1990 Bruckert et a1.
`.. 371/683
`
`4.916.704 A
`4/1990 Brucken et al.
`........... 371/683
`4.924.378 A ‘
`e1 :11.
`5/1990 Hershe
`
`4.956.769 A
`9/1990 Smith ym
`
`4.981.370 A *
`1/1991 Dziewit et a.
`5.005.174 A
`4/1991 Bmckcrt et a1.
`............ 364/550
`5.007.082 A
`411991 Cummins ......
`.. 380/4
`
`5.052.040 A
`9/1991 Preston et :11.
`................. 380/4
`5.063.596 A
`11/1991 Dyke .......................... 380/49
`5.065.312 A
`.. 395/575
`11/1991 Bruckert el al.
`
`5.068.780 A
`11/1991 Bruckert e1 :11.
`.. 395/700
`
`5.099.485 A
`. 371/683
`3/1992 Bruckert e1 :11.
`5.113.442 A
`380/25
`5/1992 Moir ..........
`
`5.142.578 A
`..
`.. 380/4
`8/1992 Matyas et a1.
`5.153.881 A
`10/1992 Brucken e161.
`. 371/113
`
`
`5.163.138 A
`.....
`11/1992 Thirumalai
`395/325
`5 175 852 A
`12/1992 Johnson et al.
`395/600
`.
`.
`.
`6666.66 6 66
`................ 666,66
`5.249.187 A
`9/1993 Bruckert el al.
`. 371/681
`5.251.227 A
`10/1993 Bmckert e1 211.
`380/4
`
`5.255.367 A
`10/1993 Bruckert et al.
`395/200
`
`(Continued)
`
`(56)
`
`References Cited
`
`OTHER PUBLICATIONS
`
`U.S. PATENT DOCUMENTS
`4.238.854 A
`12/1980 Ehrsam et al.
`................. 375/2
`4,278,837 A
`7/1981 Besl
`.............
`. 178/2709
`
`.
`. 178/2209
`4.386.234 A
`5/1983 Ehrsam et a1.
`
`..
`.. 364/550
`4.432.064 A
`2/1984 Barker et al.
`
`
`364/200
`3/1984 Budde et a1.
`.....
`364/200
`4/1984 Childs. Jr. et al.
`
`. 235/380
`6/1984 Weinstcin .....
`. 364/475
`11/1985 Levine .........
`
`'2’ 1985 SChmid‘ 3‘ 31-
`364/300
`2/1986 Goldman """""""" 340/825'34
`2/1986 Westhelmer et al.
`........ 364/200
`
`4/1986 Hardy ..............
`364/200
`340/825 3]
`5/1986 Atalla
`
`5/1986 Wade em]
`364/200
`
`12/1936 Hellman c1 al.
`178/22.”
`
`7/1988 Allen el al.
`..... 380/25
`
`10/1988 Crossley
`364/200
`
`4,438,494 A
`4.442.484 A
`4.453.074 A
`4.551.810 A
`4558‘4'3 A
`4568936 A
`4.573.119 A
`4.584,639 A
`4 588 991 A
`4:591:975 A
`4.633.036 A
`4,757,533 A
`4.780.821 A
`
`A Cryptographic File System for Unix, Matt Blaze. (Nov.
`:1:
`1993).
`
`'
`(Confirmed)
`
`AB
`
`’Em/ 'ner—Justin T Darrow
`’"
`-
`
`P .
`"mm
`7
`STRACT
`(5 )
`Cryptographic methods and systems are disclosed. The
`cyrptographic methods provide transparent encryption and
`-
`-
`-
`decrypuon of documents 1n an clcctromc document man—
`.
`agement system. The cryptographic system adds a software
`module to an electronic document management system
`Which traps file ”0 events and Performs cryptographic
`functions on the relevant documents before passing control
`back to the electronic document management system.
`
`
`
`BIackBerry Corporation Exhibit 1011, pg. 1
`
`BlackBerry Corporation Exhibit 1011, pg. 1
`
`

`

`US 6,185,681 C1
`Page 2
`
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`A
`
`US. PATENT DOCUMENTS
`_
`.
`........... 395/425
`11/1993 ancnsco et a].
`“”993 Janis ----------------------- 395/600
`”1994 Reede ..
`395/550
`
`2/|994 Jones ------------ 380/4
`3/1994 Bruckefl el al-
`- 371/113
`
`5/1994 Chao -----------
`395/200
`-- 380/4
`6/1994 Hallerelal
`6/1994 Smylh ............
`380/4
`
`~-
`-380/49
`7/1994 Houlberg el 91-
`395/575
`8/1994 Bmcke" 6' =11-
`
`.. 380/4
`8/1994 Hung‘el 9|.
`-----
`9/1994 Hawkins 6! =11.
`-------------- 377/54
`395/153
`3/1995 Palak 6| 9'-
`
`-~ 380/4
`2/1995 Nageletal-
`471995 Shear .......
`38074
`
`471995 Yu et al. ..................... 3957600
`571995 Aziz ........................... 380739
`1071995 Brown ct al.
`_ 330/23
`
`l0/1995 Thompson et al.
`395/600
`12/1995 Klonowski
`. 380/47
`
`
`~ 32313;)
`,1);:33; Euge‘fl" 3‘ a.
`2/1996 “41:; e311”:
`. 395/20070]
`
`271996 Linchan 61:11.
`.
`.380/21
`4/1996 Carlson e1 31.
`.
`395/186
`
`4/1996 Atkinson ..
`380/25
`871996 Shriver ....................... 3957650
`
`2
`A
`A
`A
`A
`A
`
`A
`A
`A
`A
`A
`A
`A
`A *
`A
`
`
`12/1996 H5“ ------------------------ 395/620
`171997 Boebert 81:11.
`.
`. 395/18701
`171997 Lai et a1.
`........
`.. 3647614
`
`“1997 Cooper el al.
`_________
`380/4
`3/1997 Levy et a].
`................. 395/602
`8/1997 Fisherman er al.
`3957480
`
`12/1997 McDonnal et al.
`380/4
`171998 Chan
`2/]998 Blaze ............................ 380/4
`
`5.263.147
`5.263.157
`5.276.859
`5.289.540
`5.291.494
`5.313.579
`5.319.705
`5.325.430
`5.333.198
`5.339.408
`5.343.525
`5.347.559
`5.388.196
`5.394.469
`5.410.598
`5.410.693
`5.416.842
`5.455.863
`5.463.772
`5.479.514
`5.483.649
`5.490.100
`5.490.252
`5.495.533
`5.506.961
`5.511.122
`5.546.583
`5.584.023
`5.596.718
`5.596.745
`5.598.470
`5.600.831
`5.657.470
`5.699.428
`5.713.018
`5.721.777
`
`7/l998 Samar ......................... 380730
`5.778.072 A
`7/1998 Eldridge et a].
`............... 38074
`5.787.169 A
`3/1993 McDonnal el al.
`____________ 380/4
`5.796.825 A
`971998 Finley ......
`.. 38074
`5.815.571 A
`
`.. 38074
`2/1999 Harrison
`5.870.468 A
`2/1999 Sasaki el al.
`. 380725
`5.870.477 A
`8/1999 Cane e101.
`.. 38074
`5,940,507 A
`11/1999 Sconelal.
`.. 38074
`5.987.123 A
`2/2000 Ote e161.
`...................... 380/4
`6.023.506 A
`8/2000 Fielder et a1,
`.............. 713/169
`6,105,133 A
`10/2000 Sprong el al.
`......
`.. 713/190
`6.134.659 A
`
`11/2000 Magnusson el al.
`372786
`6.154.480 A
`................ 7137165
`272001 Gamy eta].
`6.192.472 131
`672001 Brundrettetal.
`........... 713/165
`6249.866 131
`
`.. 713/165
`4/2002 Susakielal.
`.
`6.378.071 131
`572003 Bobo .......................... 713768
`6.564.321 131
`OTHER PUBLICATIONS
`
`
`
`Vault Corp. The Snoop—Proof Disk. Filelok. p. 2 012.
`FWB Inc. of San Francisco. CA, Hard Disk Partition (tm)
`v3_
`
`Symantec Corp. Norton Utilities for DOS/Windows 3.x.
`Secure File‘System Information. Secure File System (SFS)
`for.DQS/‘Mndows-
`.
`.
`1 of 1.
`lnv1nc1b1e Data Systems. Inc.. 1nv1nc1ble Disk. p.
`Kiran Movva. Security Designed for Your Eyes Only. p. 1 of
`5.
`
`Ermelindo Mauriello. Transparent Cryptographic File Sys-
`[cm
`'
`.
`.
`A. Del Sorbo. Desrgn and Implementatlon of a Transporent
`Cryptograpmc F1|e System for Uan. p.
`l of 6. Unwersrta d1
`SalemO. Baronissi (SA) Italy.
`VDDR.TXT. Virtual Encrypted Disk Facility, p.
`
`l of 12.
`
`* cited by examiner
`
`BlackBerry Corporation Exhibit 1011, pg. 2
`
`BlackBerry Corporation Exhibit 1011, pg. 2
`
`

`

`US 6,185,681 Cl
`
`1
`EX PARTE
`
`REEXAMINATION CERTIFICATE
`ISSUED UNDER 35 U.S.C. 307
`
`THE PATENT IS HEREBY AMENDED AS
`INDICATED BELOW.
`
`Matter enclosed in heavy brackets [ ] appeared in the
`patent, but has been deleted and is no longer a part of the
`patent; matter printed in italics indicates additions made
`to the patent.
`
`AS A RESULT OF REEXAMINATION. IT HAS BEEN
`DETERMINED THAT:
`
`l0
`
`IS
`
`Claims 1—30 are cancelled‘
`
`New claims 31—38 are added and determined to be
`patcntable.
`
`20
`
`3]. A method ofencrypting an electronic document which
`is opett
`in an application program running in a general
`purpose computer; the general purpose computer including
`a display, a user input device, a crypto module and a
`processor, the tnetltod comprising:
`providing plural documents having respective names
`providing a first table having
`the natnes of encrypted documents
`for each of tlte natnes of encrypted documents in the
`first table, key natnes associated with the encryption
`key values for the encrypted documents
`(a) front within the application program running in the
`general purpose computer: a user issuing one of a
`“close, ” “save" or “save as " command for the docu-
`ntent using the user input device:
`(b) automatically translating the command into an event;
`(c) the crypto module automatically trapping the event:
`((1) the crypto module determining if the document should
`be encrypted using the first table, and if so then
`automatically obtaining an encryption key value by
`retrieving a key natne associated with a name of the
`selected document from the first table and
`retrieving the encryption key value associated with the
`key name from a second table,
`the second table
`having at least one encryption key value and at least
`one key name respectively associated with one of the
`encryption key values
`(e) the crypto module automatically encrypting the docu-
`\ment using the encryption key value;
`(I) the crypto module automatically passing control to an
`electronic document management system: and
`(g) the electronic document management system execut-
`ing the issued “close." “save " or “save as " command:
`whereby the electronic document
`is automatically
`encrypted.
`32. The method of encrypting a document of claim 3]
`wherein the second table is stored in a smart card.
`33. A method of decrypting a document which is to be
`opened in an application program running in a general
`purpose computer, the general purpose computer including
`a display, user input device, a crypto module and a
`processor. the method comprising:
`providing plural documents having respective names
`providing a first table having
`
`25
`
`30
`
`35
`
`40
`
`45
`
`50
`
`55
`
`65
`
`(I)
`
`is automatically
`
`2
`the names of encrypted documents
`for each of the names of encrypted documents in the
`first table, key names associated with the decryption
`key values for the encrypted documents
`(a) user selecting the document
`to be opened in the
`application program using the user input device;
`(b) an “open " command issuing for the document to be
`opened in the application program;
`(c) automatically translating the command into an event;
`(d) the crypto module automatically trapping the event;
`(e) the crypto module determining if the selected docu-
`ment should be decrypted using the first table, and ifso
`then automatically retrieving a decryption key value by
`retrieving a key name associated with a name of the
`selected document from the first table and
`retrieving the decryption key value associated with the
`key name from a second table,
`the second table
`having at least one decryption key value and at least
`one key name respectively associated with one of the
`decryption key values
`the crypto module automatically decrypting the
`selected document using the decryption key value;
`(g) the crypto module automatically passing control to an
`electronic document management system,- and
`(It) the electronic document management system auto-
`matically executing the issued “open" comtnand so
`that the selected document is opened in the application
`program;
`whereby the selected document
`decrypted.
`34. The method of decrypting a document of claim 33’
`wherein the second table is stored iii a smart card.
`35. A program product for use in a general purpose
`computer that executes program steps recorded in a
`computer-readable media to perform a method ofencrypting
`a selected one ofplural electronic documents which is open
`in an application program running in a general purpose
`computer, the general purpose cotnputer includittg a display,
`a user input device and a processor,
`the program product
`comprising:
`a recordable media; and
`a program of computer—readable instructions executable
`.. by_ the computer system to perform method steps carn-
`prising:
`in response to a user issuing one ofa “close, " "save" or
`“save as" command for the selected document using
`the user input device from within the application pro-
`gram and the command being translated into an event.
`automatically trapping the event;
`using a first table to determine if the selected docutnent
`should be encrypted, thefirst table having the names of
`encrypted documents and, for each of the names of
`encrypted documents in the first table. a key name
`associated with an encryption key value for the
`encrypted document
`automatically obtaining an encryption key value by
`retrieving a key name associated with a name of the
`selected document from the first table and
`retrieving the encryption key value associated with the
`key name front a second table,
`the second table
`having at least one encryption key value and at least
`one key name respectively associated with one of the
`encryption key values
`automatically encrypting the selected document using the
`encryption key value: and
`
`BIackBerry Corporation Exhibit 1011, pg. 3
`
`BlackBerry Corporation Exhibit 1011, pg. 3
`
`

`

`US 6,185,681 Cl
`
`using a first table to determine if the selected document
`automatically passing control to an electronic document
`should be decrypted, a first table having the names of
`management system;
`encrypted documents and, for each of the names of
`whereby the electronic document management system can
`encrypted documents in the first table, a key name
`then execute the issued “close, " "save" or “save as"
`associated with a decryption key value for the
`command and the electronic docutnent is automatically 5
`encrypted document
`encrypted.
`automatically retrieving a decryption key value by
`36. The program product of claim 35 wherein the second
`retrieving a key name associated with a name of the
`table is stored in a smart card.
`selected document from the first table and
`37. A program product for use in a general purpose
`retrieving the decryption key value associated with the
`kev name from a second table the second table
`computer that executes program steps recorded in a 10
`hdving at least one decryption key value and at least
`computer-readable media toperformamelhodofdecwptmg
`one key name respectively associated with one ofthe
`a selected one ofplural documents which is to be opened in
`decryption key values
`'
`an application program runntng lit
`the general purpose
`computer, the general purpose computer including a display,
`automaticall ldec ”tilt
`the selected document usin the
`,
`.
`g
`3
`r”
`g
`user input dewce and a processor the program product
`decryption key value: and
`.
`.
`.
`comprising:
`automatically passmg control to an electrontc docutnent
`,
`management system;
`a recordable media; and
`whereby the electronic document management system can
`a program of computer-readable instructions 933614101718
`then execute the issued open command so that
`the
`bill” computer ”519'" ’0 petj’orm method 519175 00"" 20
`selected document is opened in the application pro-
`P””"185
`gram and the selected document
`is automatically
`in response toa user selecting the selected document to be
`decrypted.
`opened in the application program using the user input
`38. The program product of claim 37 wherein the second
`device and an ”open " command issuing for the
`selected document
`to be opened in the application 25 table is stored in a smart card.
`program and the command being translated into an
`event, automaticallytrapping the event;
`
`15
`
`*
`
`*
`
`*
`
`*
`
`is
`
`BlackBerry Corporation Exhibit 1011, pg. 4
`
`BlackBerry Corporation Exhibit 1011, pg. 4
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMM1$SIONER FOR PATENTS
`Po. Box I450
`Almdria, Virginia 223I3-I4so
`mummy/v
`
`APPLICATION No.
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION No.
`
`90/006,529
`
`02/10/2003
`
`6185681
`
`7590
`
`05/31/2005
`
`Steven C. Sereboff
`SoCal IP Law Group
`310 N. Westlake Blvd.
`Suite 120
`Westlake Village, CA 91362
`
`8234
`
`EXAMINER
`
`WE" "UMBER
`
`DATE MAILED: 05/31/2005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Frcwoc (Rev. 10/03)
`
`BIackBerry Corporation Exhibit 1011, pg. 5
`
`BlackBerry Corporation Exhibit 1011, pg. 5
`
`

`

`Control No.
`
`Patent Under Reexamination
`
`_
`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`90/005529
`Examiner
`
`Justin T. Darrow
`
`5135581
`Art Unit
`
`2132
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`1. K4 Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Ct 37 CFR 1.313(8). A Certificate will be
`issued in view of
`
`(a) E Patent owner's communication(s) filed: 28 April 2005.
`(b) E] Patent owner's late response filed:
`.
`(c) E] Patent owner's failure to file an appropriate response to the Office action mailed:
`(d) E] Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31).
`
`(e) [:1 Other:
`Status of Ex Parte Reexamination:
`
`[:1 Yes E No
`C] Yes E No
`
`(f) Change in the Specification:
`(9) Change in the Drawing(s):
`(h) Status of the Claim(s):
`.
`(1) Patent claim(s) confirmed:
`(2) Patent claim(s) amended (including dependent on amended claim(s)):
`(3) Patent claim(s) cancelled: fl.
`(4) Newly presented claim(s) patentable: 49-56.
`
`(5) Newly presented cancelled claims: 31-48.
`
`
`
`2. E Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for
`Patentability and/or Confirmation.”
`
`3. CI Note attached NOTICE OF REFERENCES CITED (PTO-892).
`
`4. E] Note attached LIST OF REFERENCES CITED (PTO-1449 or PTO/SB/08).
`
`5. 1:] The drawing correction request filed on
`
`is: E] approved
`
`E] disapproved.
`
`6. E] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)—(d) or (f).
`a)|:] All
`b)I:l Some"
`c)E] None
`of the certified copies have
`I:] been received.
`E] not been received.
`.
`[I been filed in Application No.
`.
`[:1 been filed in reexamination Control No.
`El been received by the International Bureau in PCT Application No.
`
`
`* Certified copies not received:
`
`7. CI Note attached Examiner's Amendment.
`
`8. CI Note attached Interview Summary (PTO-474).
`
`9. C] Other:
`
`rcuestcr)
`cc: Re uester (it'third art
`U.S. Patent and Trademark Office
`PTOL-469 (Rev.9—04)
`
`
`
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 05262005
`
`BIackBerry Corporation Exhibit 1011, pg. 6
`
`BlackBerry Corporation Exhibit 1011, pg. 6
`
`

`

`Application/Control Number: 90/006,529
`Art Unit: 2132
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`Claims 1-56 have been subject to reexamination. Claims 1, 11, 12, 21, 29, and 30 have
`
`been amended, claims 3-7, 14-18, and 23-28 have been canceled, and new claims 31-48 have
`
`been added in an amendment filed 12/22/2003. Claims 1, 2, 8-13, 19-22, and 29-48 have been
`
`finally rejected. Claims 12, 29, 30, 37, 39, 41, 43, 46, and 48 have been amended and new
`
`claims 49-56 have been added in an amendment after final rejection filed 10/12/2004. Claims 1,
`
`2, 8-13, 19-22, and 29-48 have been canceled in an amendment afier final rejection filed
`
`04/28/2005. Claims 49-56 have been subject to reexamination.
`
`2.
`
`Newly presented claims-49-56 are patentable.
`
`Reexamination
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
`
`The following is an examiner's statement of reasons for patentability and/or confirmation
`
`of the claims found patentable in this reexamination proceeding:
`
`Claims 49 and 50; 51 and 52; 53 and 54; and 55 and 56 are drawn to a method of
`
`encrypting an electronic document, a method of decrypting a document, a program product
`
`recorded in computer-readable media to perform a method of encrypting a selected one of plural
`
`electronic documents, and a program product recorded in computer-readable media to perform a
`
`method of decrypting a selected one of plural electronic documents. The closest prior art,
`
`Brundrett et al., US. Patent No. 6,249,866 B1, discloses such methods and program products.
`
`Although Brundrett et al., US. Patent No. 6,249,866 Bl anticipates claims 49-56, Brundrett et al.
`
`does not claim a first table having names of encrypted documents and, for each of the names of
`
`BIackBerry Corporation Exhibit 1011, pg. 7
`
`BlackBerry Corporation Exhibit 1011, pg. 7
`
`

`

`Application/Control Number: 90/006,529
`Art Unit: 2132
`
`Page 3
`
`the encrypted documents, key names associated with the encryption key values for‘the encrypted
`
`documents. This particular feature explicitly incorporated into independent claims 49, 51, 53,
`
`and 55 render claims 49—56 patentably distinct from any claim of Brundrett et al., US. Patent
`
`No. 6,249,866 B1 under the two-way test of 37 CFR § 1.601(n). See MPEP §§ 806.05(h) and
`
`2301.02 and Eli Lilly & Co. v. Board ofRegents ofthe University of Washington, 67 USPQ2d
`
`1161, 1164 (Fed. Cir. 2003). Further, this particular feature renders the rejection of the claims
`
`49-56 under 35 U.S.C. § 102(e) based on Brundrett et al., US. Patent No, 6,249,866 B1 eligible
`
`to be overcome by a declaration under 37 CFR § 1.131. Sec 37 CFR § 1.131(a)(l) and MPEP §
`
`715. The Declaration of Stephen Zizzi (Second) (inventor), Paper No. AF/D (04/28/2005), filed
`
`04/28/2005, in combination with exhibits, Paper No. AF/D (04/28/2005), filed 04/28/2005, and
`
`Paper No. AF/D (10/21/2004), filed 10/21/2004, clearly show completion of the invention,
`
`including an actual reduction to practice, of claims 49—56 before 09/01/1997 before the effective
`
`filing date of 09/ 16/ 1997 of Application No. 08/931,774, maturing into issued patent, US. Patent
`
`No. 6,249,866 B1. See MPEP § 715.07 I. The actual reduction to practice and sale ofthe
`
`invention of claims 49-56 before 09/01/ 1997 is corroborated in the Declaration of Christopher
`
`W. Mahne (Second) (President of MAZ Technologies, Inc., the patent owner), Paper No. AF/D
`
`(04/28/2005), filed 04/28/2005, and the Declaration of Paul Halpem (representative of the
`
`customer, Lyon & Lyon), Paper No. (10/ 12/2004), filed 10/ 12/2004. Thus, these declarations are
`
`sufficient to show the reduction to practice of the invention of claims 49-56 before the effective
`
`date ofBrundrett et al., US. Patent No. 6,249,866 B1 to overcome the rejection under 35 U.S.C.
`
`§ 102(e) based on this reference. See MPEP § 715.07 III. (A). The next closest prior art, Blaze,
`
`“A Cryptographic File System for Unix,” discloses similar methods and program products.
`
`However, Blaze neither teaches nor suggests a first table having names of encrypted documents
`
`BIackBerry Corporation Exhibit 1011, pg. 8
`
`BlackBerry Corporation Exhibit 1011, pg. 8
`
`

`

`Application/Control Number: 90/006,529
`Art Unit: 2132
`
`Page 4
`
`and, for each of the names of the encrypted documents, key names associated with the
`
`encryption key values for the encrypted documents. This distinct feature explicitly recited in
`
`independent claims 49, 51, 53, and 55 render claims 49 and 50; 51 and 52; 53 and 54; and 55 and
`
`56, respectively, allowable.
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: ”Comments on Statement of Reasons for Patentability and/or
`
`Confirmation" and will be placed in the reexamination file.
`
`Telephone Inquiry Contacts
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Justin T. Darrow whose telephone number is (571) 272-3801, and
`
`whose electronic mail address is justin.darrow@uspto.gov. The examiner can normally be
`
`reached Monday-Friday from 8:30 AM to 5:00 PM.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Gilberto Barron, Jr., can be reached at (571) 272-3799.
`
`The fax number for Formal or Official faxes to Technology Center 2100 is (703) 872-
`
`9306.
`
`In order for a formal paper transmitted by fax to be entered into the application file, the
`
`paper and/or fax cover sheet must be signed by a representative for the applicant. Faxed formal
`
`papers for application file entry, such as amendments adding claims, extensions of time, and
`
`statutory disclaimers for which fees must be charged before entry, must be transmitted with an
`
`authorization to charge a deposit account to cover such fees.
`
`It is also recommended that the
`
`cover sheet for the fax of a formal paper have printed “OFFICIAL FAX”. Formal papers
`
`BIackBerry Corporation Exhibit 1011, pg. 9
`
`BlackBerry Corporation Exhibit 1011, pg. 9
`
`

`

`Application/Control Number: 90/006,529
`Art Unit: 2132
`
`Page 5
`
`transmitted by fax usually require three business days for entry into the application file and
`
`consideration by the examiner. Formal or Official faxes including amendments after final
`
`rejection (37 CFR 1.116) should be submitted to (703) 872—9306 for expedited entry into the
`
`application file.
`
`It is further recommended. that the cover sheet for the fax containing an
`
`amendment after final rejection have printed not only “OFFICIAL FAX” but also
`
`“AMENDMENT AFTER FINAL”.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217—9197 (toll—free).
`
`Any inquiry of a general nature or relating to the status of this application should be
`
`directed to the Group receptionist whose telephone number is (5701) 272-2100.
`
`BIackBerry Corporation Exhibit 1011, pg. 10
`
`BlackBerry Corporation Exhibit 1011, pg. 10
`
`

`

`Application/Control Number: 90/006,529
`
`Art Unit: 2132
`
`Page 6
`
`May 26, 2005
`
`M 01m”
`JUSTIN T. DARROW
`PRIMARY EXAMINER
`TECHNOLOGY CENTER 2100
`
`éfigéégglnflj/
`
`é MEL
`Patentability Review Conferee
`
`Mg”
`
`Patentability Review Conferee
`
`BIackBerry Corporation Exhibit 1011, pg. 11
`
`BlackBerry Corporation Exhibit 1011, pg. 11
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.
`
`8234
`
`Appl. No.
`
`Applicant
`Filed
`
`TC/A .U .
`
`Examiner
`
`Docket No.
`
`Customer N0.
`
`:
`
`:
`:
`
`:
`
`:
`
`:
`
`:
`
`90/006,529
`
`Zizzi
`2/ 10/2003
`
`2 | 3 2
`
`Darrow
`
`M000-P02145US
`
`33356
`
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`Background
`
`Declaration of Stephen Zizzi
`
`1.
`
`1, Stephen Zizzi, am the named inventor on US Patent No 6,185,681 (“the ‘681 patent”).
`
`The ‘681 patent issued from Application No. 09/074,191 filed May 7, 1998 (“the ‘191
`
`application”). My curriculum vitae is attached as Exhibit Z—25.
`
`2. All acts and events described herein took place in the United States. More particularly,
`
`nearly all took place in Orange County or Los Angelcs County, California.
`
`Conception
`
`3.
`
`In early 1 995, while working for Litronic Industries, I recognized the need for cryptography
`
`and information privacy in private sector markets with regard to electronic files. The
`
`electronic files may be created, accessed and transferred on or to an individual computer or a
`
`networked computer. The electronic files may contain business, health and personal
`information.
`
`1/44
`
`Declaration of Stephen Zizzi
`
`BIackBerry Corporation Exhibit 1011, pg. 12
`
`BlackBerry Corporation Exhibit 1011, pg. 12
`
`

`

`4.
`
`I recognized that a void in the market for encryption of electronic files in private sector
`
`markets was based on (1) processor intensive mathematical operations that slowed the
`
`performance of file operating systems, (2) user intensive processes that required the user to
`
`manually run a process to prepare a file for encryption and decryption separate and distinct
`
`from opening and closing the file, and (3) inability to securely store and manage the
`
`encryption and decryption keys such that files could be shared securely between workers or
`
`communicators.
`
`5.
`
`In April 1995 I attended an industry conference called “Internet World” in San Jose, CA and
`
`further observed the void in the market for security products for file security in the private
`
`sector. The products that were available at the time were stand alone windows applications
`
`that were very cumbersome and prone to be ignored by the user.
`
`6. During the summer of 1995, as Marketing Manager of Litronie Industries, I worked with
`
`software developers to develop an easy to use software product to be used with virtually any
`
`application that would run on the Microsofi Windows operating system. The only product
`
`that was developed was SecureSmart, a stand alone application that ran in Windows.
`
`SeeureSmart utilized the DES encryption algorithm and had a primitive private key
`
`management and transfer methodology. SecureSmart was slow and was manually operated.
`
`It required human involvement to open applications, find files to secure, pick (or generate) an
`
`encryption key, encrypt the file, destroy the original clear text file and then save the new
`
`encrypted file to disk with an indicative name. In order to use the file in clear text or to share
`
`it with another person whether locally or across the Internet, the same process had to be
`
`performed in reverse but with an additional challenge, selecting the proper encryption or
`
`decryption key. The product did not succeed commercially.
`
`7. During this time I recognized the need to eliminate the user effort in securing the files and
`
`create an encrypted file system that is transparent to the user.
`
`8.
`
`In Fall 1995 I began technical research to explore low level interaction with the Windows
`
`operating system in order to intercept file commands and develop a transparent encrypted file
`
`2/44
`Declaration of Stephen Zizzi
`
`BIackBerry Corporation Exhibit 1011, pg. 13
`
`BlackBerry Corporation Exhibit 1011, pg. 13
`
`

`

`system.
`
`I recognized that the effort would require significant investment in research and
`
`development. Litronic denied these filnds and further development was put on hold.
`
`9.
`
`In December 1995 I began preparations for starting a new business to develop this product.
`
`10. In January 1996 I met Chris Mahne and we discussed financing and starting a technology
`
`venture. Chris was a fellow Cornell University graduate whose ambition and drive caught
`
`my attention. He seemed to quickly understand the concepts of security and the user issues
`
`that I had been trying to resolve. We agreed that the focus of the new business would be on
`
`commercial markets and a theme of transparent, non—disruptive file encryption that would be
`
`based on the Microsoft Windows operating system.
`
`11.
`
`I left a fulfilling and prosperous career at Litronic Industries in May 1996 on good terms
`
`with the company and its President at the time, and went on to co-found MAZ Technologies,
`
`Inc. (“MAZ”) with Chris Mahne and devote my efforts full-time to the development of the
`
`transparent encryption technology.
`
`
`1996 Source Code: Exhibit 2-1 through 2- l 0
`
`12. From May 1, 1996 through May 7, 1998, the filing date ofthe ‘ 191 application, Iworked full
`
`time at MAZ to develop encryption products, and especially the inventions of the ‘191
`
`application. Since MAZ was small, everyone had many roles. I was initially CEO, but most
`
`of my time was spent designing the products and implementing or managing the
`
`implementation of those designs.
`
`13. Our initial product, the IntelliGard M Series, was similar to Litronic’s SecureSmart, and it
`
`sold about as well, too. Meanwhile, I continued to develop a better product based upon my
`
`concept of a transparent encrypted file system, which eventually was released as IntelliGard
`
`E.
`
`14. By December 1996, I had the basic code written for what we were calling IntelliGard Smart
`
`Suite, but later called IntelliGard E. Exhibits 2—] though 2-10 are copies of IntelliGard
`
`3/44
`Declaration of Stephen Zizzi
`
`BIackBerry Corporation Exhibit 1011, pg. 14
`
`BlackBerry Corporation Exhibit 1011, pg. 14
`
`

`

`source code samples with the initial concept development code dated December 1996.
`
`Altogether, Exhibits Z-1 through Z-10 represent a body of work in which my concept of a
`
`transparent encrypted file system took form. The exhibits were the first proof ofeoncept of
`
`the file encryption and decryption processes. The code in Exhibits Z-l through Z-10
`
`functioned as a standalone program to be used with any encryption algorithm. The claimed
`
`features included in Exhibits Z-l through Z—10 were produced prior to September 1997.
`
`Although some information included in the exhibits may refer to dates subsequent to
`
`September 1997, they refer to subsequent revisions of source code that was created prior to
`
`September 1997.
`
`IS. Exhibit Z—l is the source code for the IntelliGard Smart Suite Version 1.5. The IntelliGa