UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent No. 9,104,842 B2
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`: Attorney Docket No. 081841.0119
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`Inventors: Moskowitz, Scott A.;
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`Filed:
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`Aug. 24, 2007
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`Issued:
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`Aug. 11, 2015
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`Assignee: Wistaria Trading Ltd.
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`:
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`:
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`: IPR No.: Unassigned
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`:
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`Title:
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`Data Protection Method and Device
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`:
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`Submitted Electronically via the Patent Trial and Appeal Board End to End System
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`DECLARATION OF DR. VIJAY K. MADISETTI
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0001
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In Re:
`
`U.S. Patent No. 9,104,842 B2
`
`: Attorney Docket No. 081841.0119
`
`Inventors: Moskowitz, Scott A.;
`
`Filed:
`
`Aug. 24, 2007
`
`Issued:
`
`Aug. 11, 2015
`
`Assignee: Wistaria Trading Ltd.
`
`
`
`
`
`:
`
`:
`
`: IPR No.: Unassigned
`
`:
`
`Title:
`
`Data Protection Method and Device
`
`:
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0001
`
`
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`I, Vijay K. Madisetti, hereby declare the following:
`I.
`BACKGROUND AND EDUCATION
`1.
`My name is Vijay Madisetti, and I am a Professor of Electrical and
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`Computer Engineering at Georgia Institute of Technology (“Georgia Tech”) in
`
`Atlanta, GA.
`
`2.
`
`I received a Bachelor of Technology in electronics and Electrical
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`Communications Engineering from the Indian Institute of Technology (IIT) in 1984.
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`I received my Ph.D. in Electrical Engineering and Computer Sciences (EECS) from
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`the University of California, Berkeley in 1989. I am currently a tenured full Professor
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`at Georgia Institute of Technology, and I have been on the faculty of Georgia
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`Institute of Technology since 1989. I have authored or co-authored over 100
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`reference articles in the area of electrical engineering. I have also authored, co-
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`authored, or edited several books in the areas of electrical engineering,
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`communications, signal processing, communications, and computer engineering,
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`including VLSI Digital Signal Processors (1995) and The Digital Signal Processing
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`Handbook (First & Second Editions) (1998, 2012), and recently, Cloud Computing
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`(2013). Although I discuss my expert qualifications in more detail below, I also
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`attach as Ex. 1003 a recent and complete curriculum vitae, which details my
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`educational and professional background and includes a listing of most of my
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`publications.
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`DISH-Blue Spike-842
`Exhibit 1002, Page 0002
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`
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`3.
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`I have been involved in research and technology in the area of
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`distributed computer and information systems since the late 1980s, and my work in
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`this area has focused on secure and efficient distribution of information over
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`networks, synchronization of updates across a distributed network, and
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`multiprocessing systems and tools.
`
`4.
`
`I have been extensively involved in the activities of one of the premier
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`SSOs in the world, the IEEE, since the 1980s, and I have participated in the
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`development of standards for hardware design and description languages, such as
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`VHDL, used in design of computer chips – IEEE 1076.6. This standard is now used
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`worldwide in design of advanced computer chips and associated design automation
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`tools for VLSI. I have also taught courses and authored papers and books on how
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`to comply with these standards in terms of writing code for design of chipsets and
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`their software.
`
`5.
`
`The
`
`Internet
`
`Engineering
`
`Task
`
`Force
`
`(IETF)
`
`(https://www.ietf.org/how/wgs/) is the premier SSO in the area of computer
`
`networks and associated technologies, and creates a number of working groups
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`(WG) that focus on specific deliverables (guidelines, standards specifications, etc.)
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`and focus on creating and improving existing network protocols. I have contributed
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`draft proposals for such improvement to standardized protocols over the past several
`
`years that include contributed to mobile wireless, stream controlled transport
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0003
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`
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`protocols, networking, encryption and voice/video transmission. These proposals
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`include:
`
`6.
`
`IETF Internet Draft (Nov 2002): Enhancements to ECRTP with
`
`Applications
`
`to Robust Header Compression
`
`for Wireless.
`
` URL
`
`https://tools.ietf.org/html/draft-madisetti-rao-suresh-rohc-00
`
`7.
`
`IETF Internet Draft (May 2002): Voice & Video over Mobile IP
`
`Networks. URL https://tools.ietf.org/html/draft-madisetti-argyriou-voice-video-
`
`mip-00
`
`8.
`
`IETF Internet Draft (July 2002): A Transport Layer Technology for
`
`Improving QoS
`
`of Networked Multimedia Applications. URL
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`https://tools.ietf.org/html/draft-madisetti-argyriou-voice-video-mip-00
`
`9.
`
`I have developed speech and video codecs that comply with 3GPP
`
`standards, such as a Wideband AMR and the AMR. These tasks involved
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`developing software to implement the associated 3GPP standards and also tests to
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`verify compliance to these standards. The families of these 3GPP standards include
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`TS 26.071 – TS 26.204, covering over a hundred standard specification documents.
`
`The software that I developed that complies with these standards is now available
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`commercial on millions of 3G and 4G handsets worldwide. My codecs were tested
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`on live 3G and 4G networks in Europe and USA since the early 2004 – 2006
`
`timeframe.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0004
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`
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`10.
`
`I have also developed several speech and VOIP codecs that conform
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`with the ITU (International Telecommunications Union) standards G.723.1, G.729
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`and Echo Cancellers and Encryption Softwareconforming with the ITU G.168
`
`standards (See https://www.itu.int/rec/T-REC-G.723/en)
`
`11.
`
` The software and code I have developed and tested based on
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`technologies essential to the ITU standards are now used by one of the leading
`
`suppliers of VOIP/Internet telephones in the world. This software is also part of
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`commercially released soft switches for internet telephony used extensively in Asia.
`
`See
`
`for
`
`example
`
`URL
`
`https://www.thehindubusinessline.com/bline/2002/04/09/stories/200204090066070
`
`0.htm
`
`12. As part of earlier litigation-related consulting work, I tested compliance
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`of several smartphones (3G and 4G) in their use of standards-essential patents (SEP)
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`related to 3GPP and 3GPP2 standards, primarily in the area HARQ and encryption.
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`This work involved use of commercial 3GPP test equipment that included base
`
`stations and UEs to evaluate compliance to the standard and further opine on the
`
`issue of alternatives.
`
`13.
`
`Further, as stated above, I serve as the official representative of Georgia
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`Tech to ETSI. In that role, I manage Georgia Tech’s relationship with ETSI and am
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`responsible for representing Georgia Tech’s interests as they relate to ETSI,
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`DISH-Blue Spike-842
`Exhibit 1002, Page 0005
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`
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`including to choose technical areas to which Georgia Tech may contribute, to
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`determine which meetings to attend, and participating in technical work related to
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`various technologies, including those in the area of 5G, 4G, and IoT. In addition, as
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`noted, prior to assuming this role, in the past twenty years I have been retained to
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`test various commercial mobile and wireless products to determine if they comply
`
`with various ETSI, 3GPP, and TIA (including 3GPP2) standards.
`
`14.
`
`In 1987, at UC Berkeley, I worked on implementing a globally
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`distributed file system, called GAFFES, to facilitate information sharing in a global
`
`network of workstations. GAFFES provided four services to handle naming,
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`replication and caching, security and authentication, and file access primitives.
`
`GAFFES outlined features of access in terms of users and their roles, and in terms
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`of beliefs and policies. Every file in GAFFES has at least one role, and the owner of
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`a role determines the roles that may use that role to operations on software files.
`
`15.
`
`I have authored, co-authored, or edited several books in the past
`
`twenty years, including:
`
` VLSI Digital Signal Processors
`Madisetti, V.K.
` Quick-Turnaround ASIC Design in VHDL
`Romdhane, M., Madisetti, V.K., Hines, J.
` The Digital Signal Processing Handbook (First Edition)
`Madisetti, V. K., Williams, D. (Editors)
` VHDL: Electronics Systems Design Methodologies.
`Madisetti, V. K. (Editor)
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0006
`
`
`
` Platform-Centric Approach to System-on-Chip (SoC)
`Design.
`Madisetti, V. K., Arpnikanondt, A.
` The Digital Signal Processing Handbook – Second Edition.
`Madisetti, V. K. (2009/2010)
` Cloud Computing: A Hands-On Approach
` A Bahga, V. Madisetti (2013)
` Internet of Things: A Hands-On-Approach
`A. Bahga, V. Madisetti (2014)
` Blockchain Applications: A Hands-On-Approach
` A Bahga, V. Madisetti (2017)
` Big Data Analytics: A Hands-On-Approach
`A. Bahga, V.Madisetti (2018)
` Cloud Solutions Architect: A Hands-On Approach
`A Bahga, V. Madisetti (2019)
`
`16.
`
`In the past decade I have authored several peer-reviewed papers in the
`
`area of computer and software design, and these include:
`
` V. Madisetti, et al: “The Georgia tech Digital Signal Multiprocessor,
`IEEE Transactions on Signal Processing, Vol 41, No. 7, July 1993
` V. Madisetti et al, “Rapid Prototyping on the Georgia Tech Digital
`Signal Multiprocessor”, IEEE Transactions on Signal Processing, Vol
`42, March 1994.
` V. Madisetti, “Reengineering legacy embedded systems”, IEEE
`Design & Test of Computers, Vol 16, Vol 2, 1999
` V. Madisetti et al, “Virtual Prototyping of Embedded Microcontroller-
`based DSP Systems”, IEEE Micro, Vol 15, Issue 5, 1995
` V. Madisetti, et al, “Incorporating Cost Modeling in Embedded-
`System Design”, IEEE Design & Test of Computers, Vol 14, Issue 3,
`1997
` V. Madisetti, et al, “Conceptual Prototyping of Scalable Embedded
`DSP Systems”, IEEE Design & Test of Computers, Vol 13, Issue 3,
`1996.
` V. Madisetti, Electronic System, Platform & Package Codesign,”
`IEEE Design & Test of Computers, Vol 23, Issue 3, June 2006.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0007
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`
` V. Madisetti, et al, “A Dynamic Resource Management and
`Scheduling Environment for Embedded Multimedia and
`Communications Platforms”, IEEE Embedded Systems Letters, Vol 3,
`Issue 1, 2011.
`
`17.
`
`I have over 100 peer-reviewed publications issued from the early 1980s
`
`to the present on topics related to computer engineering, computer sciences and
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`wireless communications and digital system design.
`
`18.
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`I am a Fellow of the Institute of Electrical and Electronics Engineering
`
`(“IEEE”), which signifies the highest professional standing in my research and
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`educational community.
`
`19.
`
`I have already been qualified as an expert in over a dozen trials, and
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`two recent cases: Harkabi v. SanDisk Corp., No. 08-cv-8203 (S.D.N.Y.) and
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`Yangaroo Inc. v. Destiny Media Techs. Inc., No. 09-cv-462 (E.D. Wisc.) the
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`technology at issue was specific to the area of digital rights management of software
`
`products. I testified in both of these cases at trial (Harkabi v. SanDisk) and by
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`deposition (Yangaroo v. Destiny).
`
`20.
`
`In sum, I have over 25 years of experience in research and development
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`in the areas of computer engineering and electrical engineering as a professor,
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`researcher and consultant.
`
`21.
`
`I have been retained by DISH Network Corporation, DISH Network
`
`L.L.C., and Dish Network Service L.L.C. and am submitting this declaration to offer
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`my independent expert opinion concerning certain issues raised in the Petition for
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0008
`
`
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`inter partes Review (“Petition”). My compensation is not based on the substance of
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`the opinions rendered here. As part of my work in connection with this matter, I
`
`have studied U.S. Patent No. 9,104,842 (“the ‘842 patent”), including the respective
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`written descriptions, figures, claims, in addition to the original file history and
`
`subsequent reexamination proceedings. Moreover, I have reviewed the Petition for
`
`Inter Partes Review of the ‘842 patent and also considered at least the following
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`references:
`
` U.S. Patent No. 5,199,066 to Logan (“Logan”), entitled “Method and
`Apparatus for Protecting Software,” filed on April 18, 1989 and issued on
`March 30, 1993 [Exhibit 1011]
`
` U.S. Patent No. 5,103,476 to Waite et al. (“Waite”) entitled “Secure
`System for Activating Personal Computer Software at Remote
`Locations,” filed on November 7, 1990, and issued on April 7, 1992
`[Exhibit 1012]
`
` U.S. Patent No. 5,757,907 to Cooper et al. (“Cooper”), entitled “Method
`and Apparatus for Enabling Trial Period Use of Software Products:
`Method and Apparatus for Generating a Machine-Dependent
`Identification,” filed on April 25, 1994 and issued on May 26, 1998
`[Exhibit 1013]
`
` First Amended Complaint for Patent Infringement filed in Blue Spike LLC
`et al. v. DISH Network Corp. et al., Case No. 1:19-cv-00160-LPS-CJB
`(Mar. 29, 2019 D. Del.) [Exhibit 1007]
`
` File History for U.S. Patent No. 9,104,842 [Exhibit 1004]
`
` File wrapper for application no. 90/014,13 ex parte reexamination of U.S.
`Patent No. 9,104,842 [Exhibit 1005]
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0009
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`
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`II.
`
`RELEVANT TECHNOLOGY BACKGROUND
`A.
`Background of Software Registration & Activation
`22.
`Software authorization and licensing systems have been of interest, and
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`available, to the industry at least since the early 1980s.1 This availability and use
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`increased significantly with the wider use of software by end-users.2 As use and
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`distribution of software increased, however, it became apparent that there were
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`problems associated with the increased use – an increase in unauthorized use, or
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`pirates.3 As a result, the industry became more interested in methods of preventing
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`unregistered sales and unauthorized use through the use of authorization and
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`licensing technologies.4
`
`23.
`
`In order for such technologies to be viable, however, software designers
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`had to take into account cost and compatibility with existing programs and operating
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`systems, including those that are not otherwise protected and those that are
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`protected.5 Taking these concerns to mind, some of the initial technologies included
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`hardware devices, such as dongles.
`
`24.
`
`For example, in 1980, Business Professional Industrial protected its
`
`accounting software with a hardware security device that was inserted into a game
`
`1 Appendix A, Suhler, et al., IEEE Software (1986).
`2 Id. at 34.
`3 Id.
`4 Id. at 35.
`5 Id.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0010
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`
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`paddle port.6 Sensor-Based System also used the hardware approach by requiring
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`the installation of a PROM chip in the system.7 The major drawbacks of these
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`systems were cost, portability, inconvenience and durability.
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`25.
`
`From the hardware devices mentioned above, the focus of software
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`authorization shifted to preventing unauthorized copying and prevention of
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`unauthorized execution of software products. Techniques developed to address this
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`new focus include copy protection, validation and encryption.8 However these all
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`have their own advantages and disadvantages, as described below:
`
`6 Id.
`7 Id.
`8 Id. at 35-36.
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`DISH-Blue Spike-842
`Exhibit 1002, Page 0011
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`26.
`
`Prior art software authorization approaches have focused on validation
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`approach in which protected software checks the right of the user to execute or
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`operate the software. Systems using the validation approach typically look for a
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`unique key in the system, and if it is not found, the program assumes that the
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`software is on an unlicensed machine and execution is aborted.9 If the key is found,
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`the program continues to execute.
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`27. A related validation method is customer-based validation. An example
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`of this is found in the case of the “Computerized Gradebook.”10 The Computerized
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`Gradebook utilizes a “software-based software authorization system,” also referred
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`to as a “customer validation procedure.” 11 A teacher using the Computerized
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`Gradebook may use the software a number of times without obtaining
`
`authorization.12 However, in order to obtain full rights to the software, the teacher
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`must obtain a password from the vendor. The teacher does so by either calling or
`
`mailing a twelve-digit number displayed on the software front screen.13 The twelve-
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`digit number is made up of: (1) a six-digit number unique to that piece of software
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`(i.e., serial number), (2) a two-digit number based on the number of classes recorded
`
`9 Id. at 36.
`10 Appendix B, Bryon K. Ehlmann, “Designing Software to be Used Up and
`Protecting it From Pirates,” ACM SIGSMALL/PC Notes, vol. 11, iss. 3 (Aug. 1985).
`11 Id. at 10.
`12 Id. at 10, 14.
`13 Id. at 10-11.
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`DISH-Blue Spike-842
`Exhibit 1002, Page 0012
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`in the gradebook, and (3) a four-digit number that characterizes how the gradebook
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`has been used up to that time.14 Thus, this number is unique to the software and to
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`the user. From this number, the vendor generates a password and transmits it, orally
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`or physically, to the teacher.15 The teacher then enters the password and the software
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`validates the password “based on the same computation used by the vendor.16 Once
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`validated, the Computerized Gradebook is available for further use.
`
`B.
`28.
`
`The ‘842 Patent
`The ‘842 Patent, entitled “Data Protection Method and Device,” was
`
`filed on August 24, 2007 and issued on August 11, 2015. The earliest priority
`
`application listed on the face of the ‘842 Patent is application No. 09/046,627, now
`
`Patent No. 6,598,162 (“the ‘162 Patent”), which was filed on March 24, 1998. The
`
`filing date of the ‘162 Patent is the earliest priority filing date provided on the face
`
`of the ‘82 Patent. Thus, I have assumed a priority date of March 24, 1998 for the
`
`‘602 Patent. However, I also understand that during an ex parte reexamination of
`
`the ‘842 Patent, the Patent Owner alleged a priority date of January 17, 1996.17 The
`
`opinions contained herein would not change if the priority date were January 17,
`
`1996 or earlier.
`
`14 Id. at 11-14.
`15 Id. at 12, 14.
`16 Id. at 14.
`17 ‘842 Patent Reexamination File Wrapper, Ex. 1005, at 699.
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`DISH-Blue Spike-842
`Exhibit 1002, Page 0013
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`29.
`
`The ‘842 Patent is generally directed to “[a]n apparatus and method for
`
`encoding and decoding additional information into a digital information in an
`
`integral manner.”18 More specifically, the ‘842 patent provides “a method and
`
`device for data protection.”19 The “Summary of the Invention” portion of the ‘842
`
`Patent explains that “digital information, including a digital sample and format
`
`information, is protected by identifying and encoding a portion of the format
`
`information.”20 The alleged invention of the ‘842 Patent accomplishes this goal
`
`using “[e]ncoded digital information, including the digital sample and the encoded
`
`format information” that “is generated to protect the original digital information.”21
`
`30.
`
`The specification of the ‘842 Patent explains that “[a]n executable
`
`computer program is variously referred to as an application, from the point of view
`
`of a user, or executable object code from the point of view of the engineer.”22 The
`
`‘842 Patent continues, and states that the executable computer program is comprised
`
`of a “collection of smaller, atomic (or indivisible) chunks of object code” that
`
`together form “the complete executable object code or application,” and “may also
`
`require the presence of certain data resources,” which are separate non-executable
`
`18 ‘842 Patent, Ex. 1001, at Abstract.
`19 Id.
`20 Id. at 7:8-11.
`21 Id. at 7:11-13.
`22 Id. at 11:15-17.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0014
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`portions of the program.23 The ‘842 Patent refers to the smaller chunks as “sub-
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`objects” or “portions” of the larger program, and states that “[t]hese sub-objects can
`
`be packaged into what are referred to in certain systems as ‘code resources,’ which
`
`may be stored separately from the application, or shared with other applications,
`
`although not necessarily.”24
`
`31.
`
`The ‘842 Patent’s alleged invention involves storing certain code
`
`resources separately from the application to form an “encoded code resource” and
`
`making those displaced portions of code accessible only if proper licensing
`
`information is provided. In this regard and, the ‘842 Patent describes a “first method
`
`of the present invention,” which “involves hiding necessary ‘parts’ or code
`
`‘resources’ in digitized sample resources.”25 Similarly, the ‘842 Patent discusses
`
`another method of the present invention in which certain code resources are marked
`
`and a “utility will … encode them into one or several data resources using a
`
`stegacipher process.”26 The ‘842 Patent explains that the “end result will be that
`
`these essential code resources are not stored in their own partition, but rather stored
`
`as encoded information in data resources,” i.e., separate files from the executable
`
`23 Id. at 11:17-21.
`Id. at 11:61-64, 11:28-31 (“Each function, or procedure, written in the
`24
`programming language, represents a self-contained portion of the larger program,
`and implements, typically, a very small piece of its functionality.”).
`25 Id. at 12:24-26.
`26 Id. at 13:13-16.
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`DISH-Blue Spike-842
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`portion of the program.27 The code resources that are stored separately are referred
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`to as “encoded code resources,” and the application must also contain “a code
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`resource which performs the function of decoding an encoded code resource from a
`
`data resource” using the key.28 That is, the encoded code resources are “are not
`
`accessible at run-time without [a] key.”29 And, the ‘842 Patent explains that the key
`
`is chosen “so that it corresponds, is equal to, or is a function of, a license code or
`
`license descriptive information, not just a text file, audio clip or identifying piece of
`
`information.”30
`
`32.
`
`Therefore, through this technique of moving and separating portions of
`
`the executable code and making them accessible only by entering a key that is based
`
`on licensing information, a programmer cannot merely patch the code to erase the
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`requirement to enter a license key because and gain unauthorized access to the
`
`program because “the key is necessary to access the underlying code, i.e., what the
`
`user understands to be the application program.”31
`
`The Logan Prior Art Reference
`C.
`33. U.S. Patent No. 5,199,066 to Logan (“Logan”), entitled “Method and
`
`Apparatus for Protecting Software,” was filed on April 18, 1989 and issued on
`
`27 Id. at 13:16-18.
`28 Id. at 13:50-53.
`29 Id. at 13:18-19.
`30 Id. at 13:25-38.
`31 Id. at 13:40-42.
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`DISH-Blue Spike-842
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`March 30, 1993. Logan discloses a method and system for protecting a software
`
`program.32 With reference to Figure 1, Logan discloses “a typical personal computer
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`10 of a type well-known in the art” that “includes a standard keyboard 12, a standard
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`cathode ray tube (CRT) or screen 14 and a pair of floppy disk drives 16.”33
`
`Logan teaches that “[t]he disk drives 16 are employed in a manner well known in
`
`the computer art for receiving one or more floppy disks to facilitate the loading or
`
`entry of computer software or programs stored within a floppy disk into the
`
`computer 10.”34
`
`34.
`
`Logan teaches that “[a]ssociated with each original copy of the software
`
`is a second software code which is stored within the software at a hidden location.”35
`
`32 Logan, Ex. 1011, at Abstract.
`33 Id. at 3:33-38, Fig. 1.
`34 Id. at 3:45-50.
`35 Id. at 4:32-34.
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`In particular, Logan discloses that the second software code “is unique for each
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`original copy of the software and may have a predetermined relationship with the
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`first software code or serial number” such that the “software supplier is able to
`
`identify the second software code for each particular embodiment of the software by
`
`reference to the first software code or serial number.”36 Further, “[t]he computer
`
`program automatically changes or increments the second software code in a
`
`predetermined manner each time the software is copied.”37
`
`35.
`
`Logan teaches that “[w]hen a user wishes to use a program protected
`
`by the present invention, the software program is installed into the hardware being
`
`employed by the user.”38 At the completion of the installation process, the software
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`program “requests that the user input a hardware code uniquely associated with the
`
`particular hardware with which the software is to be employed” and “also requests
`
`that the user input the first software code or serial number for the particular
`
`software.”39
`
`The Waite Prior Art Reference
`D.
`36. U.S. Patent No. 5,103,476 to Waite et al. (“Waite”), entitled “Secure
`
`System for Activating Personal Computer Software at Remote Locations,” was filed
`
`36 Id. at 4:19-25, 4:32-40
`37 Id. at 4:50-52.
`38 Id. at 4:65-67.
`39 Id. at 5:6-15.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0018
`
`
`
`on November 7, 1990 and issued on April 7, 1992. Waite is generally directed to
`
`“[a] process and system for activating various programs are provided in a personal
`
`computer.”40 Specifically, Waite teaches a process wherein “[b]y providing the
`
`registration computer with various information, a potential licensee can register to
`
`utilize the program.”41
`
`37. Waite teaches using user-specific identification data to generate
`
`tamperproof overlay file that includes license information as well as critical or
`
`essential portions of executable code. The methods and systems of Waite provide
`
`that “a particular program which does not contain a critical or essential segment is
`
`provided in a personal computer or other device on a magnetic disc, firmware,
`
`hardware, or other means.”42 During installation and registration of the program, a
`
`“registration shell program 11 would provide a data entry form which would be
`
`displayed on the licensee PC, requesting the licensee to provide identification
`
`information, such as a billing address, an account number and the term of the license,
`
`etc.”43
`
`38. Waite then discloses that “[t]he user identification data is then used to
`
`build a unique tamperproof overlay file generated by merging the user identification
`
`40 Waite, Ex. 1012, at Abstract.
`41 Id.
`42 Id. at 2:36-39.
`43 Id. at 3:9-13.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0019
`
`
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`data with critical segment program instructions 36.”44 Specifically, Waite teaches
`
`that “the registration process, according to the present invention, produces a
`
`tamperproof overlay file which includes critical portions or segments of a main
`
`program file and license control data.”45 To achieve the goals of protecting the
`
`software program, Waite explains that “[t]he tamperproof overlay is the key device
`
`that prevents license abuse after activation because the critical segment of program
`
`instructions may not be separated from the unique licensee identification data and
`
`license control data without detection, nor may the licensee identification and license
`
`control data be changed without detection.”46
`
`39. The program of Waite then generates “[a] unique set of encryption and
`
`decryption keys” wherein “the entire contents of the tamperproof overlay file is
`
`encrypted using the encryption key.”47 Waite teaches that the decryption key is
`
`“[b]ased upon the encryption key.” 48 Waite discloses that “when the personal
`
`computer user commands the operating system to run the product application
`
`program, the operating system will load the main program and the loader segment.”49
`
`Upon run, “[t]he loader segment will execute before any other program instructions”
`
`44 Id. at 3:43-46.
`45 Id. at 4:55-59.
`46 Id. at 4:62-68.
`47 Id. at 3:49-52.
`48 Id. at 3:52-53.
`49 Id. at 4:15-18.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0020
`
`
`
`and it “executes the activation of the product application program starting with a test
`
`for the presence of the tamperproof overlay.”50 Waite then explains that “[i]f no
`
`tamperproof overlay has been installed, the loader segment exits to the operating
`
`system, thus preempting the execution of the main program files.”51 However, if “a
`
`tamperproof overlay has been installed, the loader segment finds the decryption key
`
`and proceeds to decrypt and load the tamperproof overlay, overlaying the main
`
`program files with the missing critical segment program instructions as well as the
`
`unique identification and license control data.”52
`
`The Cooper Prior Art Reference
`E.
`40. U.S. Patent No. 5,757,907 to Cooper et al. (“cooper”), entitled “Method
`
`and Apparatus for Enabling Trial Period Use of Software Products: Method and
`
`Apparatus for Generating a Machine-Dependent Identification,” was filed on April
`
`25, 1994 and issued on May 26, 1998. Cooper discloses “[a] method and
`
`apparatus . . . for distributing a software object from a source to a user.”53 For
`
`example, Cooper teaches that “[a] software object is encrypted with an encryption
`
`operation utilizing a long-lived encryption key.” 54 This process “would
`
`provide . . . a means to try the program before obtaining (by purchasing) a license
`
`50 Id. at 4:18-22.
`51 Id. at 4:22-25.
`52 Id. at 4:25-31.
`53 Cooper, Ex. 1013 at Abstract
`54 Id.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0021
`
`
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`for it.”55 Cooper includes several examples of software products including the “file
`
`management program,” “Lotus,” “WordPerfect,” “DrawPerfect,” and “Norton
`
`Utilities:”56
`
`55 Id. at 8:8-11.
`56 Id. at 2:31-33, Figs. 8 and 10A.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0022
`
`
`
`41. Cooper teaches a “software object [that] is encrypted with an encryption
`
`operation utilizing a long-lived encryption key” and “loaded onto a user-controlled
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`data processing system having a particular configuration.”57 Cooper depicts the
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`“data processing system 10 which may be programmed in accordance with the
`
`present invention:”58
`
`After loading, “[t]he file management program is executed by the user-controlled
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`data processing system.”59 Cooper explains that the “real key” is utilized to “decrypt
`
`encrypted software products.”60 The interface screens of Cooper prompt the user for
`
`57 Id. at 3:12-14.
`58 Id. at 7:11-13, Fig. 1.
`59 Id. at 2:43-45.
`60 Id. at 16:24-26.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0023
`
`
`
`“information about the customer” including the user’s zip code as well as a “product
`
`key.”61 Cooper discloses that “[t]he product key allows the product contained in the
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`memory media to be temporarily accessed for a prescribed and predefined
`
`interval.”62 The “real key generator” uses “product key 377, customer number 369,
`
`control block text 373, machine identification 357 and trial interval data 374” to
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`“produce[] as an output the derived real key:”63
`
`Cooper then provides “a decryption operation utilizing a validated real key:”64
`
`61 Id. at 13:11-12, Figs. 10A, 10B.
`62 Id. at 9:21-23.
`63 Id. at 15:28-34, Fig. 15
`64 Id. at 6:38-39, Fig. 23.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0024
`
`
`
`III.
`
`SUMMARY OF OPINION
`42.
`I have been asked to provide this declaration addressing the validity of
`
`claims 1, 11, and 13 of the ‘842 Patent. It is my opinion that each of these claims is
`
`invalid at least in view of the Logan and Waite prior art references disclosed above.
`
`The opinions that follow show that claims 1, 11, and 13 are invalid at least based on
`
`the following grounds:
`
` Claim 1 of the ‘842 Patent is invalid under 35 U.S.C. § 102 as anticipated
`by Logan;
`
` Claim 1 of the ‘842 Patent is invalid under 35 U.S.C. § 103 as obvious
`over Logan; and
`
` Claims 11 and 13 of the ‘842 Patent are invalid under 35 U.S.C. § 103
`as obvious over Waite in view of Cooper.
`IV. CONSTRUCTION OF CLAIMS
`43.
`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action under 35 U.S.C.
`
`DISH-Blue Spike-842
`Exhibit 1002, Page 0025
`
`
`
`§ 282(b) (hereinafter the “Phillips standard”), including construing the claim in
`
`accordance with the ordinary and customary meaning of such claim as understood
`
`by a person of ordinary skill in the art (“POSITA”) at the time the claimed invention
`
`of the patent was made, and consistent with the patent’s intrinsic record, which
`
`includes the patent itself as well as the patent’s prosecution history.
`
`44.
`
`I understand that a POSITA is deemed to read the claim term in the
`
`context of the entire patent, including the particular claim in which a claim term
`
`appears and the specification. I further understand from counsel that under the
`
`Phillips standard, the specification is the single best guidance to the meaning of a
`
`claim term. I further understand that a patentee can act as his or her own
`
`“lexicographer” by explicitly def
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