UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`DISH NETWORK L.L.C.
`Petitioner
`v.
`WISTARIA TRADING LTD.
`Patent Owner
`____________
`
`Case No. TBD
`Patent 9,021,602
` ____________
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`1
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0001
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`DISH NETWORK L.L.C.
`Petitioner
`v.
`WISTARIA TRADING LTD.
`Patent Owner
`____________
`
`Case No. TBD
`Patent 9,021,602
` ____________
`
`DECLARATION OF DR. VIJAY K. MADISETTI
`
`1
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0001
`
`
`
`Exhibit No.
`
`Description of Document
`
`EXHIBITS
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent No. 9,021,602 to Moskowitz et al. (“’602 Patent”)
`
`[Reserved]
`
`Curriculum Vitae of Dr. Vijay K. Madisetti
`
`File History for U.S. Patent No. 9,021,602
`
`File History for Reexamination Request No. 90/014,137 of U.S. Patent
`No. 9,021,602
`
`File History for U.S. Patent No. 9,104,842 (“parent ’842 Patent”)
`
`File History for Reexamination Request No. 90/014,138 of U.S. Patent
`No. 9,104,842
`
`U.S. Patent No. 5,757,907 to Cooper et al. (“Cooper”)
`
`First Amended Complaint for Patent Infringement, Blue Spike LLC v.
`DISH Network Corporation, Civil Action No. 1:19-cv-00160-LPS-CJB
`(filed Mar. 29, 2019) (“District Court Litigation”)
`
`First Amended Complaint, Blue Spike LLC v. DISH Network Corporation
`al.,
`Nos.
`6:18-CV-00333-RWS-KNM
`(E.D.
`Tex.),
`et
`1:18-CV-01512-LPS-CJB (D. Del.) (the “Prior Litigation”)
`
`Order Granting Joint Motion to Transfer to the District of Delaware and
`Stay All Deadlines, 6:18-CV-00333-RWS-KNM, ECF No. 19, entered in
`Prior District Court Litigation
`
`Notice of Voluntary Dismissal Without Prejudice, served in Prior District
`Court Litigation
`
`File History for U.S. Patent No. 6,598,162
`
`Software Authorization Systems, Paul A. Suhler et al., IEEE Software
`(1986).
`
`2
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0002
`
`
`
`Exhibit No.
`
`1015
`
`Description of Document
`
`Designing Software to be Used Up and Protecting it from Pirates, Bryon
`K. Ehlmann, ACM SIGSMALL/PC Notes, vol. 11, issue 3 (Aug. 1985)
`
`3
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0003
`
`
`
`I, Vijay K. Madisetti, hereby declare the following:
`I.
`SUMMARY OF OPINIONS
`1.
`I have been asked to provide this declaration addressing the validity of
`
`claims 1, 5, 8, and 10 of U.S. Patent No. 9,021,602 (“’602 Patent”). It is my opinion
`
`that each of these claims is invalid in view of the prior art. The opinions that follow
`
`demonstrate that claims 1, 5, 8, and 10 are invalid at least based on the following
`
`ground:
`
` Claims 1, 5, 8, and 10 of U.S. Patent No. 9,021,602 are obvious over U.S.
`Patent No. 5,757,907 to Cooper et al. (“Cooper”).
`
`II.
`
`BACKGROUND AND EDUCATION
`2.
`My name is Vijay Madisetti, and I am a Professor of Electrical and
`
`Computer Engineering at Georgia Institute of Technology (“Georgia Tech”) in
`
`Atlanta, GA.
`
`3.
`
`I received a Bachelor of Technology in Electronics and Electrical
`
`Communications Engineering from the Indian Institute of Technology (IIT) in 1984.
`
`I received my Ph.D. in Electrical Engineering and Computer Sciences (EECS) from
`
`the University of California, Berkeley in 1989. I am currently a tenured full Professor
`
`at Georgia Institute of Technology, and I have been on the faculty of Georgia
`
`Institute of Technology since 1989. I have authored or co-authored over 100
`
`reference articles in the area of electrical engineering. I have also authored, co-
`
`authored, or edited several books in the areas of electrical engineering,
`
`4
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0004
`
`
`
`communications, signal processing, communications, and computer engineering,
`
`including VLSI Digital Signal Processors (1995) and The Digital Signal Processing
`
`Handbook (First & Second Editions) (1998, 2012), and recently, Cloud Computing
`
`(2013). Although I discuss my expert qualifications in more detail below, I also
`
`attach as EX[1003] a recent and complete curriculum vitae, which details my
`
`educational and professional background and includes a listing of most of my
`
`publications.
`
`4.
`
`I have been involved in research and technology in the area of
`
`distributed computer and information systems since the late 1980s, and my work in
`
`this area has focused on secure and efficient distribution of information over
`
`networks, synchronization of updates across a distributed network, and
`
`multiprocessing systems and tools.
`
`5.
`
` I have also designed software encryption and protection software for
`
`mobile phones utilized by a large phone vendor in the early 2000 time-frame. I have
`
`been involved in research and technology in the area of distributed computer and
`
`information systems since the late 1980s, and my work in this area has focused on
`
`secure and efficient distribution of information over networks, synchronization of
`
`updates across a distributed network, and multiprocessing systems and tools.
`
`6.
`
` I have been extensively involved in the activities of one of the premier
`
`SSOs in the world, the IEEE, since the 1980s, and I have participated in the
`
`5
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0005
`
`
`
`development of standards for hardware design and description languages, such as
`
`VHDL, used in design of computer chips – IEEE 1076.6. This standard is now used
`
`worldwide in design of advanced computer chips and associated design automation
`
`tools for VLSI. I have also taught courses and authored papers and books on how
`
`to comply with these standards in terms of writing code for design of chipsets and
`
`their software.
`
`7.
`
`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
`
`(WG) that focus on specific deliverables (guidelines, standards specifications, etc.)
`
`and focus on creating and improving existing network protocols. I have contributed
`
`draft proposals for such improvement to standardized protocols over the past several
`
`years that include contributed to mobile wireless, stream controlled transport
`
`protocols, networking, encryption and voice/video transmission. These proposals
`
`include:
`
` 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-00IETF Internet
`Draft (May 2002): Voice & Video over Mobile IP Networks. URL
`https://tools.ietf.org/html/draft-madisetti-argyriou-voice-video-mip-00
`
`6
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0006
`
`
`
` IETF Internet Draft (July 2002): A Transport Layer Technology for
`Improving QoS of Networked Multimedia Applications. URL
`https://tools.ietf.org/html/draft-madisetti-argyriou-voice-video-mip-00
`
`8.
`
`I have developed speech and video codecs that comply with 3GPP
`
`standards, such as a Wideband AMR and the AMR. These tasks involved
`
`developing software to implement the associated 3GPP standards and also tests to
`
`verify compliance to these standards. The families of these 3GPP standards include
`
`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
`
`commercial on millions of 3G and 4G handsets worldwide. My codecs were tested
`
`on live 3G and 4G networks in Europe and USA since the early 2004 – 2006
`
`timeframe.
`
`9.
`
`I have also developed several speech and VOIP codecs that conform
`
`with the ITU (International Telecommunications Union) standards G.723.1, G.729
`
`and Echo Cancellers and Encryption Software conforming with the ITU G.168
`
`standards (See https://www.itu.int/rec/T-REC-G.723/en)
`
`10.
`
` The software and code I have developed and tested based on
`
`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
`
`commercially released soft switches for internet telephony used extensively in Asia.
`
`7
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0007
`
`
`
`See
`
`for
`
`example
`
`URL
`
`https://www.thehindubusinessline.com/bline/2002/04/09/stories/200204090066070
`
`0.htm
`
`11. As part of earlier litigation-related consulting work, I tested compliance
`
`of several smartphones (3G and 4G) in their use of standards-essential patents (SEP)
`
`related to 3GPP and 3GPP2 standards, primarily in the area HARQ and encryption.
`
`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.
`
`12.
`
`Further, as stated above, I serve as the official representative of Georgia
`
`Tech to ETSI. In that role, I manage Georgia Tech’s relationship with ETSI and am
`
`responsible for representing Georgia Tech’s interests as they relate to ETSI,
`
`including to choose technical areas to which Georgia Tech may contribute, to
`
`determine which meetings to attend, and participating in technical work related to
`
`various technologies, including those in the area of 5G, 4G, and IoT. In addition, as
`
`noted, prior to assuming this role, in the past twenty years I have been retained to
`
`test various commercial mobile and wireless products to determine if they comply
`
`with various ETSI, 3GPP, and TIA (including 3GPP2) standards.
`
`13.
`
`In 1987, at UC Berkeley, I worked on implementing a globally
`
`distributed file system, called GAFFES, to facilitate information sharing in a global
`
`8
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0008
`
`
`
`network of workstations. GAFFES provided four services to handle naming,
`
`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
`
`of beliefs and policies. Every file in GAFFES has at least one role, and the owner of
`
`a role determines the roles that may use that role to operations on software files.
`
`14.
`
`I have authored, co-authored, or edited several books in the past twenty
`
`years, including:
`
` VLSI Digital Signal Processors, Madisetti, V.K.
`
` Quick-Turnaround ASIC Design in VHDL, Romdhane, M., Madisetti,
`V.K., Hines, J.
`
` The Digital Signal Processing Handbook (First Edition), Madisetti, V.
`K., Williams, D. (Editors)
`
` VHDL: Electronics Systems Design Methodologies, Madisetti, V. K.
`(Editor)
`
` Platform-Centric Approach to System-on-Chip (SoC) Design,
`Madisetti, V. K., Arpnikanondt, A.
`
` 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, Bahga, V. Madisetti (2014)
`9
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0009
`
`
`
` Blockchain Applications: A Hands-On-Approach, A Bahga, V.
`Madisetti (2017)
`
` Big Data Analytics: A Hands-On-Approach, Bahga, V.Madisetti (2018)
`
` Cloud Solutions Architect: A Hands-On Approach, A Bahga, V.
`Madisetti (2019)
`
`15.
`
`I have over 100 peer-reviewed publications issued from the early 1980s
`
`to the present on topics related to computer engineering, computer sciences and
`
`wireless communications and digital system design.
`
`16.
`
`I am a Fellow of the Institute of Electrical and Electronics Engineering
`
`(“IEEE”), which signifies the highest professional standing in my research and
`
`educational community.
`
`17.
`
`I have already been qualified as an expert in over a two dozen trials,
`
`and two cases: Harkabi v. SanDisk Corp., No. 08-cv-8203 (S.D.N.Y.), Yangaroo
`
`Inc. v. Destiny Media Techs. Inc., No. 09-cv-462 (E.D. Wisc.) where thehe
`
`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
`
`deposition (Yangaroo v. Destiny).
`
`18.
`
`I also have several issued and pending US patents in the area of
`
`software security, encryption, licensing, custody management, insider management
`
`and protection technologies: https://patents.justia.com/inventor/vijay-k-madisetti)
`
`10
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0010
`
`
`
`19.
`
`In sum, I have over 25 years of experience in research and development
`
`in the areas of computer engineering and electrical engineering as a professor,
`
`researcher and consultant.
`
`20.
`
`I have been retained by DISH Network L.L.C. and am submitting this
`
`declaration to offer my independent expert opinion concerning certain issues raised
`
`in the Petition for Inter Partes Review of U.S. Patent No. 9,021,602 (“Petition”).
`
`My compensation is not based on the substance of the opinions rendered here. As
`
`part of my work in connection with this matter, I have studied U.S. Patent No.
`
`9,021,602 (“the ’602 Patent”), including the respective written descriptions, figures,
`
`claims, in addition to the original file history and subsequent reexamination
`
`proceedings. Moreover, I have reviewed various documents from the ongoing
`
`litigation proceeding in the U.S. District Court for the District of Delaware, Blue
`
`Spike LLC, et al. v. DISH Network Corporation, et al., Civil Action No. 1:19-cv-
`
`00160-LPS-CJB. Moreover, I have reviewed the Petition for Inter Partes Review of
`
`the ’602 patent and also considered at least the following references:
`
` 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 24, 1994 and issued on May 26, 1998
`(EX[1008])
`
`11
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0011
`
`
`
`III. LEGAL FRAMEWORK
`21.
`I understand that a patent claim is not patentable under 35 U.S.C. § 103
`
`if the differences between the patent claim and the prior art are such that the claimed
`
`subject matter as a whole would have been obvious at the time the claimed invention
`
`was made to a person having ordinary skill in the art to which the subject matter
`
`pertains. Obviousness, as I understand it, is based on the scope and content of the
`
`prior art, the differences between the prior art and the claim, the level of ordinary
`
`skill in the art, and, to the extent that they exist and have an appropriate nexus to the
`
`claimed invention (as opposed to prior art features), secondary indicia of non-
`
`obviousness.
`
`22.
`
`I have been informed that whether there are any relevant differences
`
`between the prior art and the claimed invention is to be analyzed from the view of a
`
`person of ordinary skill in the art at the time of the invention. As such, my opinions
`
`below as to a person of ordinary skill in the art are as of the time of the invention,
`
`even if not expressly stated as such; for example, even if stated in the present tense.
`
`23.
`
`In analyzing the relevance of any differences between the claimed
`
`invention and the prior art, I have been informed that I must consider the impact, if
`
`any, of such differences on the obviousness or non-obviousness of the invention as
`
`a whole, not merely some portion of it. The person of ordinary skill faced with a
`
`12
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0012
`
`
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`24. An invention is obvious if a person of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the applicant. When there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, it would be obvious to a person of ordinary skill to try the
`
`known options. If a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in the
`
`same way, using the technique would have been obvious.
`
`25.
`
`It is my understanding that a precise teaching in the prior art directed to
`
`the subject matter of the claimed invention is not needed and that one may take into
`
`account the inferences and creative steps that a person of ordinary skill in the art
`
`would have employed in reviewing the prior art at the time of the invention. For
`
`example, if the claimed invention combined elements known in the prior art and the
`
`combination yielded results that were predictable to a person of ordinary skill in the
`
`art at the time of the invention, then this evidence would make it more likely that the
`
`claim was obvious. On the other hand, if the combination of known elements yielded
`
`unexpected or unpredictable results, or if the prior art teaches away from combining
`
`13
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0013
`
`
`
`the known elements, then this evidence would make it more likely that the claim that
`
`successfully combined those elements was not obvious.
`
`26.
`
`I understand that hindsight must not be used when comparing the prior
`
`art to the claims for obviousness.
`
`27.
`
`It is my understanding that obviousness may also be shown by
`
`demonstrating that it would have been obvious to modify what is taught in a single
`
`piece of prior art to create the subject matter of the patent claim. Obviousness may
`
`be shown by showing that it would have been obvious to combine the teachings of
`
`more than one item of prior art. In determining whether a piece of prior art could
`
`have been combined with other prior art or combined with or modified in view of
`
`other information within the knowledge of one of ordinary skill in the art, the
`
`following are examples of approaches and rationales that may be considered:
`
` Combining prior art elements according to known methods to yield
`predictable results;
`
` Simple substitution of one known element for another to obtain predictable
`results;
`
` Use of a known technique to improve similar devices (methods, or
`products) in the same way;
`
` Applying a known technique to a known device (method, or product) ready
`for improvement to yield predictable results;
`
`14
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0014
`
`
`
` Applying a technique or approach that would have been "obvious to try"
`(choosing from a finite number of identified, predictable solutions, with a
`reasonable expectation of success);
`
` Known work in one field of endeavor may prompt variations of it for use
`in either the same field or a different one based on design incentives or
`other market forces if the variations would have been predictable to one of
`ordinary skill in the art; or
`
` Some teaching, suggestion, or motivation in the prior art that would have
`led one of ordinary skill to modify the prior art reference or to combine
`prior art reference teachings to arrive at the claimed invention.
`
`28.
`
`I understand that the rationale for modifying a reference and/or
`
`combining references may come from sources such as explicit statements in the prior
`
`art, or the knowledge of one of ordinary skill in the art, including any need or
`
`problem known in the field at the time, even if different from the specific need or
`
`problem addressed by the inventor of the patent claim.
`
`29.
`
`I understand that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider "secondary
`
`considerations" if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an invention
`
`would not have been obvious in view of these considerations, which include: (a)
`
`commercial success of a product due to the merits of the claimed invention; (b) a
`
`15
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0015
`
`
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`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
`
`solution provided by the claimed invention; (d) deliberate copying of the invention
`
`by others; (e) unexpected results achieved by the invention; (f) praise of the
`
`invention by others skilled in the art; (g) lack of independent simultaneous invention
`
`within a comparatively short space of time; (h) teaching away from the invention in
`
`the prior art.
`
`30.
`
`I further understand that secondary considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be to prior art features. The
`
`establishment of a nexus is a question of fact.
`
`IV. TECHNOLOGICAL BACKGROUND
`31.
`Software authorization and licensing systems have been of interest, and
`
`available, to the industry at least since the early 1980s. See EX[1014]. This
`
`availability and use increased significantly with the wider use of software by end-
`
`users. See id. at 1. As use and distribution of software increased, however, it became
`
`apparent that there were problems associated with the increased use – an increase in
`
`unauthorized use, or pirates. Id. As a result, the industry became more interested in
`
`methods of preventing unregistered sales and unauthorized use through the use of
`
`authorization and licensing technologies. Id. at 2.
`
`16
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0016
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`
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`32.
`
`In order for such technologies to be viable, however, software designers
`
`had to take into account cost and compatibility with existing programs and operating
`
`systems, including those that are not otherwise protected and those that are protected.
`
`Id. Taking these concerns to mind, some of the initial technologies included
`
`hardware devices, such as dongles.
`
`33.
`
`For example, in 1980, Business Professional Industrial protected its
`
`accounting software with a hardware security device that was inserted into a game
`
`paddle port. Id. Sensor-Based System also used the hardware approach by requiring
`
`the installation of a PROM chip in the system. Id. The major drawbacks of these
`
`systems were cost, portability, inconvenience and durability.
`
`34.
`
`From the hardware devices mentioned above, the focus of software
`
`authorization shifted to preventing unauthorized copying and prevention of
`
`unauthorized execution of software products. Techniques developed to address this
`
`new focus include copy protection, validation and encryption. Id. at 2-3. However,
`
`these all have their own advantages and disadvantages, as described below:
`
`17
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0017
`
`
`
`35.
`
` Several prior art approaches for software validation include techniques
`
`where the protected software checks the right of the user to execute or operate the
`
`software. Systems using the validation approach typically look for a unique key in
`
`the system, and if it is not found, the program assumes that the software is on an
`
`unlicensed machine and execution is aborted. Id. at 3. If the key is found, the
`
`program continues to execute.
`
`36. A related validation method is customer-based validation. An example
`
`of this is found in the case of the “Computerized Gradebook.” See EX[1015]. The
`
`Computerized Gradebook utilizes a “software-based software authorization
`
`system,” also referred to as a “customer validation procedure.” Id. at 2. A teacher
`
`using the Computerized Gradebook may use the software a number of times without
`
`18
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0018
`
`
`
`obtaining authorization. Id. at 2, 6. However, in order to obtain full rights to the
`
`software, the teacher 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. Id. at 2-3. The twelve-digit number is made up of: (1) a six-digit number
`
`unique to that piece of software (i.e., serial number), (2) a two-digit number based
`
`on the number of classes recorded in the gradebook, and (3) a four-digit number that
`
`characterizes how the gradebook has been used up to that time. Ehlmann at 11, 12,
`
`13-14. Thus, this number is unique to the software and to the user. From this
`
`number, the vendor generates a password and transmits it, orally or physically, to
`
`the teacher. Id. at 3-4. The teacher then enters the password and the software
`
`validates the password “based on the same computation used by the vendor. Id. at
`
`6. Once validated, the Computerized Gradebook is available for further use.
`
`V.
`
`THE CHALLENGED ’602 PATENT
`A.
`Priority
`37.
`I assume the priority date for the ’602 Patent is March 24, 1998. That
`
`assumption is based on the benefit claim provided on the face of the ’602 Patent,
`
`which specifically identifies four earlier-filed applications. The earliest of the four
`
`applications is U.S. Application No. 09/046,627, now U.S. Patent No. 6,598,162
`
`(“’162 Patent”), filed on March 24, 1998. See EX[1001] at [60]. No earlier benefit
`
`claim appears on the face of the ’602 Patent.
`
`19
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0019
`
`
`
`38. However, in reviewing the original prosecution history for the ’602
`
`Patent, I noticed that the Applicant intentionally deleted a benefit claim to U.S.
`
`Application No. 08/587,943, now U.S. Patent No. 5,745,569, filed on January 16,
`
`1996. See EX[1004] at 4. In reviewing the file history of the reexamination of the
`
`’602 Patent, I also noticed that the Patentee attempted to reclaim the priority benefit
`
`of the ’569 Patent, which had previously intentionally discarded, to avoid the prior
`
`art applied in the reexamination. See EX[1005] at 279-80, 287-302. To the extent
`
`the Patent Owner attempts to again reclaim the priority benefit it had once discarded
`
`for purposes of this IPR, my opinions would not change. Specifically, it would not
`
`affect any of the grounds for invalidity because I understand that Cooper is prior art
`
`to the ’602 Patent under 35 U.S.C. § 102(e) for either a March 24, 1998 or January
`
`16, 1996 priority date due to Cooper’s April 25, 1994 filing date and May 26, 1998
`
`issue date. Also, it would not affect my analysis of the POSA or obviousness
`
`because the technology at issue in the ’602 Patent was well known by either the
`
`January 16, 1996 or March 24, 1998 priority dates, and thus the level of ordinary
`
`skill in the art and knowledge of a POSA would be the same under either date.
`
`B.
`39.
`
`Overview of the ’602 Patent
`The ’602 Patent is titled “DATA PROTECTION METHOD AND
`
`DEVICE,” and it relates to “[a]n apparatus and method for encoding and decoding
`
`additional information into a digital information in an integral manner. More
`
`20
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0020
`
`
`
`particularly, the invention relates to a method and device for data protection.”
`
`EX[1008] at abstract.
`
`40. Relevant to the claims of the ’602 Patent, the protection is applied to
`
`executable object code of software applications. In the “SUMMARY OF THE
`
`INVENTION” section, the ’602 Patent states:
`
`It is thus a goal of the present invention, to provide a level
`of security for executable code on similar grounds as that
`which can be provided
`for digitized
`samples.
`Furthermore, the present invention differs from the prior
`art in that it does not attempt to stop copying, but rather,
`determines responsibility for a copy by ensuring that
`licensing information must be preserved in descendant
`copies from an original. Without the correct license
`information, the copy cannot function.
`An improvement over the prior art is disclosed in the
`present invention, in that the software itself is a set of
`commands, compiled by a software engineer, which can
`be configured in such a manner as to tie underlying
`functionality to the license or authorization of the copy in
`possession by the user. Without such verification, the
`functions sought out by the user in the form of software
`cease to properly work.
`Id. at 7:22-40.
`
`41.
`
`The specification of the ’602 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.” Id. at
`
`11:17-19. The ’602 Patent continues, and states that applications are comprised of
`
`a “collection of smaller, atomic (or indivisible) chunks of object code” that together
`
`21
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0021
`
`
`
`form “the complete executable object code or application,” and “may also require
`
`the presence of certain data resources,” which are separate non-executable portions
`
`of the program. Id. at 11:19-23. The ’602 Patent refers to the smaller chunks as
`
`“sub-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.” Id. at 11:63-66, 11:30-33 (“Each function,
`
`or procedure, written in the programming language, represents a self-contained
`
`portion of the larger program, and implements, typically, a very small piece of its
`
`functionality.”). All of this was well-known to a POSA before the relevant time.
`
`42.
`
`The ’602 Patent also discusses a known technique of storing certain
`
`code resources separately from the application, to form what the specification calls
`
`an “encoded code resource,” and making those displaced portions of code accessible
`
`only if proper licensing information is provided. The ’602 Patent describes a “first
`
`method of the present invention,” which “involves hiding necessary ‘parts’ or code
`
`‘resources’ in digitized sample resources.” Id. at 12:26-28. Therefore, this first
`
`embodiment of “the invention” involves removing a part of the executable portion
`
`of the program and hiding it by storing it in a digitized sample resource such as an
`
`audio or image files, away from the other portions of the program. See EX[1001] at
`
`12:61-62 (“Data which consists of image or audio samples is particularly useful.”).
`
`22
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0022
`
`
`
`43.
`
`Similarly, the ’602 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.” Id. at 13:15-
`
`18. The ’602 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., stored in separate files from the executable
`
`portion of the program. Id. at 13:18-20. Again, the code resources that are stored in
`
`a separate data resource are referred to as “encoded code resources.”
`
`44.
`
`The ’602 Patent recognizes that this aspect of removing and storing
`
`certain code resources separately from the other code resources is required by stating
`
`that “the application must also contain a data resource which specifies in which data
`
`resource a particular code resource is encoded.” Id. at 13:55-57 (emphasis added).
`
`Also, the application must also contain “a code resource which performs the function
`
`of decoding an encoded code resource from a data resource” using the key. Id. at
`
`13:52-55. That is, the encoded code resources are “are not accessible at run-time
`
`without [a] key.” Id. at 13:20-21. And, the ’602 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.” Id. at 13:27-40.
`
`23
`
`DISH-Blue-Spike-602
`Exhibit 1002, Page 0023
`
`
`
`45.
`
`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
`
`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.” Id. at 13:42-44.
`
`46. Claim 1 of the ’602 Patent recites the following elements, which I have
`
`labeled as elements 1[pre] through 1[e]:
`
`1[a]
`
`1[b]
`
`1[c]
`
`1[pre] computer based method for accessing functionality provided by an
`application software comprising:
`storing said application software in non transient memory of a
`computer;
`said application software in said computer prompting a user to
`enter into said computer personalization information
`said application software storing, in said non transient memory, in
`a personalization data resource, both computer configuration
`information of said computer, and a license code entered in
`response to s
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