PTO/SB/57 (09-16)
`Approved for use through 09/30/2018. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Date. °5-11-2018
`Alexandria, VA 22313-1450
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number 9021602
`issued 04-28-20Th
`
`. The request is made by:
`
`Attorney Docket No.:
`
`1.
`
`third party requester.
`
`0 patent owner.
`2. F7The name and address of the person requesting reexamination is:
`Fisch Sigler LLP
`5301 Wisconsin Avenue, NW, Fourth Floor
`Washington, DC 20015
`Requester asserts q small entity status (37 CFR 1.27) or E certifies micro entity status (37 CFR 1.29). Only a
`patent owner requester can certify micro entity status. Form PTO/SB/15A or B must be attached to certify micro
`entity status.
`
`3.
`
`4.
`
`a. A check in the amount of $
`
`is enclosed to cover the reexamination fee, 37 CFR 1.20(c)(1);
`
`O b. The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(1)
`
`to Deposit Account No.
`
`▪
`
`▪
`
`c. Payment by credit card. Form PTO-2038 is attached: or
`
`d. Payment made via EFS-Web.
`
`5. r7 Any refund should be made by M check or q credit to Deposit Account No.
`6. r7 A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`enclosed. 37 CFR 1.510(b)(4).
`
`7.
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`0
`Landscape Table on CD
`
`8. r7 Nucleotide and/or Amino Acid Sequence Submission
`
`If applicable, items a. — c. are required.
`
`a. q Computer Readable Form (CRF)
`
`b. Specification Sequence Listing on:
`
`CD-ROM (2 copies) or CD-R (2 copies); or
`ii. El paper
`c. p Statements verifying identity of above copies
`9. r7 A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`I Reexamination of claim(s) 1, 2, 3, 4, 5, 8, 10, and 12
`10. I
`11. -/ A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/S13/08, PTO-1449, or equivalent.
`
`is requested.
`
`12.
`
`An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) a request for reexamination. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS
`TO THIS ADDRESS. SEND TO: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0001
`
`

`

`PTOISB/57 (09-16)
`Approved for use through 09/30/2018, OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`13. 1 The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.510(b)(1).
`
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.510(b)(2).
`
` A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e).
`
`
`
`It is certified that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not prohibit
`requester from filing this ex patio reexamination request. 37 CFR 1.510(b)(6).
`
` a. It is certified that a copy of this request (if filed by other than the patent owner) has been served in its entirety on
`the patent owner as provided in 37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`Wistaria Trading LTD
`
`
`
`Clarendon House, 2 Church Street, Hamilton HM 11, Bermuda
`; or
`11, Date of Service: May
` b. A duplicate copy is enclosed since service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2220.
`
`2018
`
`14.
`
`15.
`
`16.
`
`/
`
`/
`
`
`
`17. Correspondence Address: Direct all communication about the reexamination to:
`
`The address associated with Customer Number:
`
`OR
`
`i
`
`Firm or
`Individual Name Fisch Sigler, LLP
`
`Address
`
`City
`Washington
`Country
`United States
`Telephone
`(202) 362-3524
`
`State
`DC
`
`Zip
`20015
`
`Email
`Joe.Edell@fischllp.com
`
`18. ,/
`
`.
`
`The patent is currently the subject of the following concurrent proceeding(s):
`a. Copending reissue Application No.
`b. Copending reexamination Control No.
`.
`c. Copending Interference No.
`.
`IS d. Copending litigation styled:
`Blue Spike, LLC v. Juniper Networks, Inc., 6:17-cv-00016-KNM (ED. Tex. 2017)
`
`WARNING: Information on this form may become public. Credit card information should not be
`included on this form. Provide credit card information and authorization on PTO-2038.
`
`/Joseph F. Edell/
`Authorized Signature
`
`Joseph F. Edell
`
`Typed/Printed Name
`
`05-11-2018
`Date
`
`67,625
`Registration No.
`
`[Page 2 of 2]
`
`•
`
`For Patent Owner Requester
`
`151 For Third Party Requester
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0002
`
`

`

`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your
`submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of
`the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2): (2)
`furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the
`U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or
`patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to
`process and/or examine your submission, which may result in termination of proceedings or abandonment of the
`application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1. The information on this form will be treated confidentially to the extent allowed under the Freedom of
`Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.0 552a). Records from this system of records may
`be disclosed to the Department of Justice to determine whether disclosure of these records is required by the
`Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence
`to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of
`settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a
`request involving an individual, to whom the record pertains, when the individual has requested assistance from
`the Member with respect to the subject matter of the record.
`4 A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having
`need for the information in order to perform a contract. Recipients of information shall be required to comply
`with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of
`records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property
`Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes
`of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C.
`218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General
`Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency's
`responsibility to recommend improvements in records management practices and programs, under authority of
`44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing
`inspection of records for this purpose, and any other relevant (Le., GSA or Commerce) directive. Such
`disclosure shall not be used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of
`the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a
`record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record
`was filed in an application which became abandoned or in which the proceedings were terminated and which
`application is referenced by either a published application, an application open to public inspection or an issued
`patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0003
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of:
`
`Scott A. Moskowitz
`
`U.S. Patent No.:
`
`9,021,602
`
`Issue Date:
`
`April 28, 2015
`
`Appl. No.:
`
`13/794,584
`
`Filing Date:
`
`March 11, 2013
`
`Title:
`
`DATA PROTECTION METHOD AND DEVICE
`
`Control No.:
`
`To be assigned
`
`Mail Stop Ex Pane Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR EX PARTE REEXAMINATION OF
`U.S. PATENT NO. 9,021,602
`
`Dear Sir or Madam,
`
`Pursuant to 35 U.S.C. § 302 and 37 C.F.R. § 1.510, ex parte reexamination is requested
`
`for claims 1, 2, 3, 4, 5, 8, 10, and 12 of United States Patent No. 9,021,602 (-the '602 Patent,"
`
`Exhibit 1), issued on April 28, 2015. The '602 Patent is currently assigned to Wistaria Trading
`
`Ltd. and remains in force.
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0004
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`TABLE OF CONTENTS
`
`INTRODUCTION
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`IDENTIFICATION OF PATENTS AND PRINTED PUBLICATIONS PRESENTED
`TO SHOW SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY
`
`I.
`
`II.
`
`III.
`
`IV.
`
`CO-PENDING LI LIGATION
`
`V.
`
`ESTOPPEL
`
`VI.
`
`OVERVIEW OF THE ORIGINAL PROSECUTION HISTORY
`
`VII. THE PRIORITY DATE OF THE '602 PATENT
`
`VIII. CLAIM CONSTRUCTION
`
`IX.
`
`THE PRIOR ART PROVIDES NEW, NON-CUMULATIVE TECHNICAL
`TEACHINGS
`
`X.
`
`DETAILED EXPLANATION UNDER 37 C.F.R. 1.510(b)(2)
`
`A.
`
`SNQ-1: Claims 1, 2, 5, 8, 10, and 12 are Anticipated by Beetcher Under 35
`U.S.C. §§ 102(a), (e)
`
`I. Beetcher Anticipates Independent Claim I
`
`2. Beetcher Anticipates Dependent Claim 2.
`
`3. Beetcher Anticipates Dependent Claim 5.
`
`4. Beetcher Anticipates Dependent Claim 8.
`
`5. Beetcher Anticipates Independent Claim 10
`
`6. Beetcher Anticipates Dependent Claim 12.
`
`5
`
`5
`
`6
`
`6
`
`7
`
`7
`
`10
`
`10
`
`12
`
` 19
`
` 19
`
` 19
`
`37
`
`39
`
`41
`
`42
`
`44
`
`B.
`
`C.
`
`SNQ-2: Claims 3 and 4 are Rendered Obvious by the Combination of Beetcher
`and Rhoads Under 35 U.S.C. § 103(a)
`
`45
`
`SNQ-3: Claims 1, 2, 5, 8, 10, and 12 are Anticipated by Beetcher '072 Under 35
`U.S.C. §§ 102(a), (b)
` 48
`
`I. Beetcher '072 Anticipates independent Claim I .
`
` 49
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0005
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`2. Beetcher '072 Anticipates Dependent Claim 2.
`
`3. Beetcher '072 Anticipates Dependent Claim 5.
`
`4. Beetcher '072 Anticipates Dependent Claim 8.
`
`5. Beetcher '072 Anticipates Independent Claim 10.
`
`6. Beetcher '072 Anticipates Dependent Claim 12.
`
`66
`
`68
`
`70
`
` 71
`
` 74
`
`D.
`
`E.
`
`SNQ-4: Claims 3 and 4 are Rendered Obvious by the Combination of Beetcher
`'072 and Rhoads Under 35 U.S.C. § 103(a).
` 74
`
`SNQ-5: Claims 1, 2, 3, 4, 5, 8, 10, and 12 are Anticipated by Cooperman Under
`35 U.S.C. § 102(a).
` 78
`
`1. Cooperman Anticipates Independent Claim 1.
`
`2. Cooperman Anticipates Dependent Claim 2
`
`3. Cooperman Anticipates Dependent Claim 3
`
`4. Cooperman Anticipates Dependent Claim 4
`
`5. Cooperman Anticipates Dependent Claim 5
`
`6. Cooperman Anticipates Dependent Claim 8
`
`7. Cooperman Anticipates Independent Claim 10.
`
`8. Cooperman Anticipates Dependent Claim 12
`
`78
`
`82
`
` 83
`
` 83
`
`84
`
`84
`
` 85
`
`87
`
`F.
`
`SNQ-6: Claims 1, 2, 5, 8, 10, and 12 are Anticipated by Hicks Under 35 U.S.C
`§§ 102(a), (e)
` 88
`
`1. Hicks Anticipates Independent Claim 1
`
`2. Hicks Anticipates Dependent Claim 2.
`
`3. Hicks Anticipates Dependent Claim 5.
`
`4. Hicks Anticipates Dependent Claim 8.
`
`5. Hicks Anticipates Independent Claim 10
`
`6. Hicks Anticipates Dependent Claim 12.
`
`ii
`
` 88
`
` 104
`
` 106
`
` 110
`
` 11 I
`
` 113
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0006
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`G.
`
`SNQ-7: Claims 3 and 4 are Rendered Obvious by the Combination of Hicks and
`Rhoads Under 35 U.S.C. § 103(a).
` 117
`
`Xl.
`
`CONCLUSION
`
`120
`
`iii
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0007
`
`

`

`Request for Ex Porte Reexamination,
`U.S. Patent No. 9,021,602
`
`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`Exhibit 1
`
`U.S. Patent No. 9,021,602 to Moskowitz ("the '602 Patent")
`
`Exhibit 2
`
`Prosecution History of the '602 Patent
`
`Exhibit 3
`
`U.S. Patent No. 5,933,497 (- Beetcher")
`
`Exhibit 4
`
`Japanese Patent Application Publication No. H05334072 ("Beetcher
`'072- )
`
`Exhibit 5
`
`English Translation of Beetcher '072
`
`Exhibit 6
`
`PCT Application Publication No. WO 97/26732 ("Cooperman")
`
`Exhibit 7
`
`U.S. Patent No. 5,982,892 ("Hicks")
`
`Exhibit 8
`
`U.S. Patent No. 5,745,604 (- Rhoads- )
`
`Exhibit 9
`
`Declaration of Dr. Claudio Silva (- Silva Declaration")
`
`Exhibit 10
`
`Curriculum Vitae of Dr. Silva
`
`Exhibit 11
`
`Plaintiff Blue Spike LLC's Proposed Terms for Construction, Pursuant to
`Patent Rule (P.R.) 4-2 in Blue Spike, LLC v. Juniper Networks, Inc., Case
`No. 6:17-cv-16-KNM (E.D. Tex.)
`
`iv
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0008
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`1.
`
`INTRODUCTION
`
`The '602 Patent claims computer software that includes a license key. As the patent
`
`explains, the function of the key is to discourage consumers from making unauthorized copies of
`
`the software. During the original prosecution of the '602 Patent, the Examiner only allowed the
`
`claims to issue based on Patent Owner's arguments that the prior art did not disclose the claimed
`
`license kcy. The Examiner stated that the prior art did not include "the limitation of storing in a
`
`personalization data resource, both computer configuration information of said computer and a
`
`license code which is used to generate a proper decoding key.-1 When he rendered this
`
`conclusion, however, the Examiner was not aware of the prior art references that indeed disclose
`
`this limitation, as well as the remaining limitations of claims 1-5, 8, 10, and 12 of the '602
`
`Patent. These prior art references—Beetcher, Beetcher '072, Cooperman, Hicks, and Rhoads—
`
`establish that independent claims 1 and 10 are invalid as anticipated and that dependent claims 2-
`
`5, 8, and 12 are anticipated or obvious. In light of the substantial new questions of patentability
`
`that these references raise, as explained in further detail below, Requester respectfully seeks ex
`
`parte reexamination.
`
`II.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`In accordance with 35 U.S.C. § 302 and 37 C.F.R. § 1.510, Requester seeks
`
`reexamination of claims 1, 2, 3, 4, 5, 8, 10, and 12 of the '602 Patent in view of the prior art
`
`patents and publications discussed herein.
`
`1 Ex. 2, Prosecution History at 308 (Notice of Allowance (filed Jan. 13, 2015)).
`
`5
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0009
`
`

`

`Request for Ex Porte Reexamination,
`U.S. Patent No. 9,021,602
`
`III.
`
`IDENTIFICATION OF PATENTS AND PRINTED PUBLICATIONS
`PRESENTED TO SHOW SUBSTANTIAL NEW QUESTIONS OF
`PATENTABILITY
`
`The following five prior art patents and printed publications establish substantial new
`
`questions of patentability of claims 1, 2, 3, 4, 5, 8, 10, and 12 of the '602 Patent:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`U.S. Patent No. 5,933,497 ("Beetcher" (Ex. 3)));
`
`Japanese Patent Application Publication No. F105334072 ("Beetcher '072"
`(Ex. 4));
`
`PCT Application Publication No. WO 97/26732 ("Cooperman" (Ex. 6));
`
`U.S. Patent No. 5,982,892 ("Hicks" (Ex. 7)); and
`
`U.S. Patent No. 5,745,604 ("Rhoads" (Ex. 8)).
`
`Beetcher, Beetcher '072, Hicks, and Rhoads were not cited in the '602 Patent itself, nor were
`
`they identified as being considered by the Examiner during prosecution. The '602 Patent lists
`
`Cooperman in its References Cited section,2 but Cooperman was not subject to any rejection or
`
`prior art discussion during the original prosecution. And as detailed in Section IX., this request
`
`presents Cooperman in a new light and a different way that escaped review during earlier
`
`examination.
`
`IV. CO-PENDING LITIGATION
`
`Requester is currently engaged in pending litigation concerning the '602 Patent in Blue
`
`Spike, LLC v. Juniper Networks, Inc., Case No. 6:17-cv-16-KNM (E.D. Tex.).
`
`The '602 Patent claims to be a continuation of the application that issued as U.S. Patent
`
`No. 9,104,842. Requester intends to file an ex parte reexamination request for the '842 Patent.
`
`Requester is unaware of any pending prosecution concerning the '602 Patent.
`
`2 '602 Patent at page 2.
`
`6
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0010
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`V.
`
`ESTOPPEL
`
`The statutory estoppel provisions of 35 U.S.C. § 315(e)(1) and 35 U.S.C. § 325(e)(1) do
`
`not prohibit Requester from filing this ex parte reexamination request.
`
`VI. OVERVIEW OF THE ORIGINAL PROSECUTION HISTORY
`
`The '602 Patent's claims 1-5, 8, 10, and 12 recite a method and computer program
`
`product for generating a decoding key to access a code resource included in the computer's
`
`software.' The '602 Patent was subject to two preliminary amendments, one rejection, two post-
`
`allowance amendments. and one post-issuance amendment. The Examiner allowed the '602
`
`Patent upon the Patent Owner adding "storing . . . both computer configuration information . . .
`
`and license code" to each independent claim.
`
`More specifically, the application for the '602 Patent was fi led on March 11, 2013 with
`
`57 claims.4 With the initial filing, Patent Owner requested preliminary amendments to update the
`
`priority claim from January 17, 1996 to March 28, 1998.' Patent Owner then requested another
`
`preliminary amendment soon thereafter, canceling all previous claims and introducing 20 new
`
`claims.°
`
`The Examiner's first Office action rejected all claims on prior art and written description
`
`grounds.' In particular, the Examiner rejected all proposed claims 58-77 under 35 U.S.C. § 112
`
`as failing to comply with the written description requirement.8 The Examiner concluded that the
`
`3 Id. at claims 1-5, 8, 10, and 12.
`
`4 Ex. 2, Prosecution History at 29-36 (Claims (filed Mar. 11, 2013)).
`
`5 Id. at 3-6 (Preliminary Amendments (filed Mar. 11, 2013)).
`
`6 Id. at 56-60 (Preliminary Amendments (filed Mar. 15, 2013)).
`
`Id. at 137-43 (Non-Final Rejection (filed May 9, 2014)).
`
`8 Id at 139-40.
`
`7
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0011
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`specification did not provide support for the claim elements "storing computer configuration of a
`
`computer in non-transient memory of the computer" and "the license code is used to generate the
`
`proper decoding key for accessing essential code resources" for independent claims 58, 69, and
`
`74.9 The Examiner further rejected claims 58-77 under 35 U.S.C. § 103 as being unpatentable
`
`over Holmes (U.S. Patent No. 5,287,407) in view of Eyres (U.S. Patent 6,324,649).10 Holmes
`
`discloses a computer based method for accessing functionality provided by an application
`
`software.11 Eyres discloses a method for prompting a user for a license code during installation
`
`or use.12
`
`In response to these rejections, Patent Owner amended and added new claims and
`
`provided arguments.13 In response to the § 112 rejection, Patent Owner argued that the
`
`specification did not need to literally recite the claim language.' Instead, Patent Owner argued
`
`that the specification disclosed the claimed concepts and therefore met the written description
`
`requirements.' 5 Nonetheless, to traverse the rejection, Patent Owner amended the claims and
`
`added new dependent claims 78-80 to include the missing concepts at issue.16 Patent Owner
`
`further argued that Holmes in view of Eyres did not render the claims obvious.17 Patent Owner
`
`9 Id.
`
`Id. at 140-43.
`
`11 U.S. Patent No. 5,287,407 to Holmes (filed May 23, 1991).
`
`12 U.S. Patent No. 6,324,649 to Eyres et al. (filed Mar. 2, 1998).
`
`13 Ex. 2, Prosecution History at 220-27 (Arnendment/Request,for Reconsideration After Non-
`
`Final Rejection (filed Oct. 22, 2014)).
`
`14 Id at 225.
`
`Id.
`
`16 id.
`
`17 Id. at 225-27.
`
`8
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0012
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`argued that both Holmes and Eyres do not disclose a personalization data resource that stores
`
`both configuration and license code.' 8 Patent Owner amended the independent claims to include
`
`the element of storing "both computer configuration information . . . and license code."19
`
`In response to the amended and new claims and arguments, the Examiner issued a notice
`
`of allowance that included an Examiner's amendment adding "said application software in said
`
`computer generating a proper decoding key, said generating comprising using said license code"
`
`to each independent claim.' The Examiner stated in the notice that the prior art of record did not
`
`disclose "the limitation of storing in a personalization data resource, both computer configuration
`
`information of said computer and a license code which is used to generate a proper decoding
`
`key.,21 Original claims 58-62, 67, 69, and 72 correspond to issued claims 1-5, 8, 10, and 12,
`
`respectively.
`
`After the notice of allowance, Patent Owner requested amendments to original claims 67,
`
`69, 71, 72, 73, and 75 to clarify issues relating to antecedent basis.' The patent issued on April
`
`28, 2015.23 Later, the PTO issued a certificate of correction to correct errors in issued claims 8,
`
`10, 11, 12, 13, 14, and 15 based on Patent Owner's request filed June 18, 2015.24
`
`►s
`
`Id.
`
`19 Id. at 221-27.
`20 Id. at 301-88 (Notice of Allowance (filed Jan. 13, 2015)).
`
`21 Id. at 308.
`22 Id. at 389-94 (Amendment After Allowance (filed Feb. 3, 2015)).
`23 U.S. Patent No. 9,021,602 to Moskowitz (filed Mar. 11, 2013).
`
`24 Ex. 2, Prosecution History at 420-23 (Request for Certificate of Correction (filed June 18,
`2015)); id. at 429 (Certificate of Correction (issued Sept. 29, 2015)).
`
`9
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0013
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`VII. THE PRIORITY DATE OF THE '602 PATENT
`
`The '602 Patent lists on its face that it is a continuation of four applications.25 Of those
`
`four applications, Application No. 09/046,627 was filed the earliest in time on March 24, 1998.26
`
`Requester does not concede that the '602 Patent is entitled to claim priority to the filing
`
`dates of any of these four applications but assumes for purposes of this proceeding only that the
`
`earliest possible priority date for the '602 Patent is March 24, 1998.
`
`VIII. CLAIM CONSTRUCTION
`
`During reexamination of an unexpired patent, claims are given their "broadest reasonable
`
`interpretation" consistent with the specification.' During reexamination of an expired patent,
`
`claims are interpreted pursuant to the principle set forth in Phillips v. AUTH Corp., 415 F.3d
`
`1303, 1316 (Fed. Cir. 2005): words of a claim "are generally given their ordinary and customary
`
`meaning" as understood by a person of ordinary skill in the art in question at the time of the
`
`invention."
`
`The '608 Patent claims to be a continuation application to an application filed March 24,
`
`1998.29 The patent does not appear to be subject to any patent term adjustment under 35 U.S.C. §
`
`I 54(b).3° Based on this March 24, 1998 priority date, the '602 Patent expired on March 24,
`
`2018.31 Thus. the patent's claims should be interpreted pursuant to the Phillips standard.
`
`25 '602 Patent at [Related U.S. Application Data].
`
`26 Id
`
`27 MPEP 2258(G) (citing In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984)).
`
`MPEP 2258(G) (citing Ex parte Papst-Motoren, 1 U.S.P.Q.2d 1655 (B.P.A.1. 1986)).
`29 '602 Patent at [Related U.S. Application Data].
`30 Id. at [Notice].
`31 35 U.S.C. § 154(a)(2); MPEP 2701
`
`10
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0014
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`"code resource" (claims 1-5, 10, 12): This term is unclear, and the intrinsic evidence
`
`fails to provide any boundaries for it, thus rendering it indefinite. But, because an ex parte
`
`reexamination request may not challenge a claim based on indefiniteness,32 Requester uses
`
`Patent Owner's construction for this term proposed in the litigation, namely, that this term is
`
`subject to its plain and ordinary meaning.33 The '602 Patents refers to sub-objects, a memory
`
`scheduler, and data as examples of code resources.34
`
`"data resource" (claims 1, 2, 4, 5, 12): This term is unclear, and the intrinsic evidence
`
`fails to provide any boundaries for it, thus rendering it indefinite. But, because an ex parte
`
`reexamination request may not challenge a claim based on indefiniteness," Requester uses
`
`Patent Owner's construction for this term proposed in the litigation, namely, that this term is
`
`subject to its plain and ordinary meaning.36
`
`"personalization data resource" (claims 1, 10): This term is unclear, and the intrinsic
`
`evidence fails to provide any boundaries for it, thus rendering it indefinite. But, because an ex
`
`parte reexamination request may not challenge a claim based on indefiniteness,37 Requester uses
`
`Patent Owner's construction for this term proposed in the litigation, namely, "serialization data
`
`resource."38
`
`32 MPEP 2258.
`
`33 Ex. 10, Blue Spike Proposed Constructions at 57-58.
`
`34 '602 Patent at 11:55-12:4, 15:36-42.
`
`35 MPEP 2258.
`
`36 Ex. 10, Blue Spike Proposed Constructions at 58.
`
`37 MPEP 2258.
`
`38 Ex. 10, Blue Spike Proposed Constructions at 57-58.
`
`11
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0015
`
`

`

`Request for Ex Pante Reexamination,
`U.S. Patent No. 9,021,602
`
`If Patent Owner establishes that the '602 Patent is unexpired, the above claim
`
`interpretations would nevertheless be the "broadest reasonable interpretation" for the relevant
`
`terms.
`
`IX.
`
`THE PRIOR ART PROVIDES NEW, NON-CUMULATIVE TECHNICAL
`TEACHINGS.
`
`The Patent Office did not consider Beetcher, Beetcher '072, Hicks, and Rhoads
`
`individually or in combination during the original prosecution of the '602 Patent. And the Patent
`
`Office did not consider Cooperman in the new light presented herein. As such, these five
`
`references provide new, non-cumulative teachings that warrant a reexamination of the '602
`
`Patent.
`
`Beetcher was issued on August 3, 1999 based on a U.S. application filed January 29,
`
`1993, which in turn was a continuation application to a U.S. application filed December 14,
`
`1990.39 Beetcher is a patent granted on a U.S. application by another before the earliest possible
`
`priority date for the '602 Patent and is thus prior art under at least pre-AIA 35 U.S.C. § 102(a)
`
`and § 102(e). As explained in more detail below, Beetcher discloses an apparatus and method of
`
`key-protected software distributed separately from an encrypted entitlement key that enables
`
`execution of the software.4° Beetcher further discloses storing, in a personalization data resource,
`
`computer configuration information and a license code which is used to generate a proper
`
`decoding key, which the Examiner found was missing from the prior art of record during the
`
`original prosecution.41 Beetcher's disclosures raise substantial questions as to the validity of
`
`claims 1-5, 8, 10, and 12 of the '602 Patent.
`
`39 Beetcher at Date of Patent [45], Filed [22], Related U.S. Application Data [63].
`
`4° Id. at Abstract, 4:3-46.
`
`41 Ex. 2, Prosecution History at 1944-47 (Patent Board Decision (filed Mar. 12, 2015)).
`
`12
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0016
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`Beetcher '072 is a Japanese Patent Application Publication published on December 17,
`
`1993.42 Beetcher '072 is a printed publication published more than one year prior to the earliest
`
`possible priority date for the '602 Patent and is thus prior art under at least pre-AIA 35 U.S.C. §
`
`102(a) and § 102(b). Beetcher '072 claims priority to the U.S. application No. 07/629,295,43
`
`which is the parent application to the Beetcher reference discussed above. This Request refers to
`
`Beetcher '072's Japanese disclosures as well as to the corresponding translation of those
`
`Japanese disclosures, Ex. 5.44 As explained in more detail below, Beetcher '072 discloses an
`
`apparatus and method of key-protected software distributed separately from an encrypted
`
`entitlement key that enables execution of the software.' Beetcher '072 further discloses storing,
`
`in a personalization data resource, computer configuration information and a license code which
`
`is used to generate a proper decoding key, which the Examiner found was missing from the prior
`
`art of record during the original prosecution.46
`
`Beetcher '072's disclosures raise substantial questions as to the validity of claims 1-5, 8,
`
`10, and 12 of the '602 Patent. These questions are non-cumulative of Beetcher because Beetcher
`
`'072 was published more than one year before the earliest potential priority date of the '602
`
`Patent. Thus, it will not be possible for Patent Owner to attempt to ante-date Beetcher '072 by
`
`42 Beetcher '072 at Publication Date (43).
`47 Id. at Related Application Data (31), (32), (33).
`
`44 Ex. 5 is a machine translation of Beetcher '072 available at https://www19.j-
`platpat.inpit.go.jp/PAl/cgi-
`bin/PA1DETAIL?MaxCount=1000&PageCount=1000&SearchType=0&TempName=w--
`adaa&MaxPage=1&D ispPage=1+1000&HitCount=31&Resu ItId—I00333004701&Cookieid=2&
`DetailPage=9&Language=ENG&Reserve1=Detai IPaging&Reserve2=j60EUdc54_KVb6a061-eg
`&Reserve3=/ (last visited April 18, 2018).
`45 Beetcher '072 at Abstract, ¶ 0022.
`
`46 Ex. 2, Prosecution History at 1944-47 (Patent Board Decision (filed Mar. 12, 2015)).
`
`13
`
`DISH-Blue Spike-602
`Exhibit 1005, Page 0017
`
`

`

`Request for Ex Parte Reexamination,
`U.S. Patent No. 9,021,602
`
`arguing the named inventor conceived and diligently reduced to practice the invention claimed in
`
`the '602 Patent prior to the publication date of Beetcher '072.
`
`Hicks was issued on November 9, 1999 based on a U.S. application filed December 22,
`
`1997.47 Hicks is a patent granted on a U.S. application by another before the earliest possible
`
`priority date for the '602 Patent and