Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 1 of 13
`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 1 of 13
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`EXHIBIT 4
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`EXHIBIT 4
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 2 of 13
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`THE UNITED STATES-PATENT AND TRADEMARK OFFICE
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`In re PATENT APPLICATION of
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`Applicants
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`Mild MULLOR et al.
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`Appin. No.
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`•
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`09/164,777
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`Filed
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`For
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`October 1, 1998
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`lAgi
`\A6,
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`g
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`TR ADS
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`METHOD OF RESTRICTING
`SOFTWARE OPERATION WITHIN
`A LICENSED LIMITATION
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`Group Art Unit
`Examiner
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`Atty. Dkt.
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`:
`:
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`:
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`2161
`J. Trammell
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`32130-142820
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`Assistant Commissioner for Patents
`Washington, D.C. 22031
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`26694
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`PATENT TRADEMARK OFFICE
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`RECEIVED
`MM 2 ;1 2nn1
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`Technology Center 2100
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`Sir:
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`AMENDMENT
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`REQUEST FOR EXTENSION OF TIME
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`Please extend the period for responding to the Office Action dated December 20, 2000 by
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`two months so that the due date expires May 21, 2001. The requisite extension fee of $195.00
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`under 37 C.F.R. 1.17 (a) (1) is attached. Should no check be attached, please charge our Deposit
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`Account 22-0261. Please also deduct any additional fees due or credit any overage to the same
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`account.
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`Responsive to the Office Action dated December 20, 2000, please amend the application
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`as follows:
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`IN THE SPECIFICATION
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`Page 1, please rewrite paragraph 2 as follows:
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`ANCORA_00000334
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`

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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 3 of 13
`Ampndmerit •
`U.S. Application No.: 09/164,777
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`Numerous methods have been devised for the identifying and restricting of an
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`unauthorized software program's operation. These methods have been primarily motivated by
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`the grand proliferation of illegally copied software, which is engulfing the marketplace. This
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`illegal copying represents billions of dollars in lost profits to commercial software developers.
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`Pagel, please rewrite paragraph ias follows:
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`Hardware based products have also been developed to validate authorized software usage
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`)---' by accessing a dongle that is coupled e.g. to the parallel port of the P.C. These units are
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`expensive, inconvenient, and not particularly suitable for software that may be sold by
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`downloading (e.g. over the internet).
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`Page 9, please rewrite paragraph 3 as follows:
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`The second non-volatile memory includes a license-record-area (9) e.g. which contains
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`at least one encrypted license-record (e.g. three records 10-12). The volatile memory
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`accommodates a license program (16) having license record fields (13-15) appended thereto. By
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`way of example said fields stand for Application names (e.g. Lotus 123), Vendor name (Lotus
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`inc.), and number of licensed copies (1 for stand alone usage, >1 for number of licensed users for
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`a network application).
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`Page 9, please rewrite paragraph 4 as follows:
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`Those versed in the art will readily appreciate that the license record is not necessarily
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`bound to continuous fields. In fact, the various license content components of the data record
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`may be embedded in various locations in the application. Any component may, if desired, be
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`encrypted.
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`ANCORA_00000335
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 4 of 13
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`'Inendmeni '
`.S. Application No.: 09/164,777
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`•
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`Page 9 and continuing on page 10, please rewrite paragraph 7 as follows:
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`The bureau forms the proposed license-record from the contents, encrypts (utilizing
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`predetermined encryption algorithm) the so formed license-record using the key (8), and
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`compares the so formed encrypted license-record with the license-record (10-12). The bureau
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`generates an overlay according to the result of the comparison indicating successful comparison,
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`non-critical failure comparison and the critical failure comparison.
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`IN THE CLAIMS:
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`Please amended the claims as follows:
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`1.
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`(Amended) A method of restrictin
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`oftware operation within a licensefor use
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`ith a computer including a first, non erasable,
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`n-volatile memory area, a second, non-
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`rasable non-volatile memory area, and a vol
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`ile memory area; the first non volatile memory
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`ccomodates data that includes unique ke
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`, the method comprising the steps of:
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`selecting a program residing i
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`e volatile memory,
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`setting up a verification st
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`ture in the second non-volatile memory , the verfication
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`tructure accommodates data t
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`t includes at least one license record,
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`verifying the progr
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`using at least said verification structure, and
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`acting on the pr
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`gram according to the verification.
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`Please add the following new claims:
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`(New)
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`The method acco
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`ing to Claim 1, wherein the unique key includes
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`a pseudo-unique key.
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`ANCORA_00000336
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 5 of 13
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`05/31/2001 11:41 FAX 2029628300
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`VENABLE
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`U002
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`Amendment
`U.S. Application No,; 09/164,777
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`17.
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`(New)
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`The method according to Claim 1, herein said step of setting up
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`a verification record, including the license record, includes encr .ting a license record data in
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`said program using at least said key.
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`18.
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`(New)
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`The method according to Clai 1, wherein said step of verifying
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`the program includes decrypting the license record data ace
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`odated in said second non
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`volatile memory using at least said unique key.
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`19.
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`(New)
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`The method according to
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`aim 1, wherein said step of verifying
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`the program includes encrypting the license record that i accommodated in said program using
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`at least said unique key.
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`20.
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`(New)
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`A method for testrictin access to a software program, comprising:
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`storing a pseudo-unique key in a first non-vo, tile memory area of a computer;
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`selecting a software program residing in a v• atile memory area of the commuter;
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`extracting license information from the so
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`are program;
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`encrypting the license information using u e pseudo-unique key;
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`storing the encrypted pseudo-unique key in a second non-volatile memory area of the
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`computer;
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`verifying the software program using cased on the encrypted pseudo-unique key; and
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`acting on the 'software program base on the verification.
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`4
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`ANCORA_00000337
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 6 of 13
`Am9ndmetit
`• U.S. Application No.: 09/164,777
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`REMARKS
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`Claims 1-15 stand rejected. By this Amendment, claim 1 has been amended, claims 14
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`and 15 have been canceled and new claims 16-20 have been added to the application. Claims 1-
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`13 and 16-20 are therefore pending. It is believed that each of the pending claims define an
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`invention which is novel and unobvious over the cited art. Favorable reconsideration of this case
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`is respectfully requested.
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`The specification has been reviewed and edited to eliminate minor inaccuracies and
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`typographical errors.
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`The present invention provides a method and system for identifying and restricting
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`operation of an unauthorized software program. In a preferred embodiemt, a key resides in a
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`first non-volatile part of a computer's memory. The non-volatile memory being typically, but not
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`necessarily, a stand alone module which is not erasable and therefore cannot be modified (see the
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`present specification, page 9, lines 3 to 7). A verification structure is formed to include one or
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`more license records, described below, and resides in a second non-volatile part of the memory,
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`(see the present specification, page 9, lines 8 to 10). The second non-volatile part is erasable and
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`therefore license data in the verification structure can be modified. For example, license data
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`may be added or modified as required, for example, when new licenses are added or expire. The
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`license records are obtained by encrypting license records extracted from the software program
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`with the key stored in the first non-volatile part of the computer's memory, page 9 lines 19 to 21.
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`The key may be of many possible variants (see, for example, the options elaborated in the
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`bridging paragraph between pages 6 and 7 of the specification). The key may also be used for
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`encryption of license record or decryption of encrypted license record all as required and
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`appropriate (see, e.g. page 7 lines 20, 21). Moreover, the contents of the license record is very
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`flexible (see e.g. page 10 lines 17 to 25). The specification explains other advantages of the
`5
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`a
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`ANCORA_00000338
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 7 of 13
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`Amendment '
`• U.S. Application No.: 09/164,777
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`invention in more detail.
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`Claims 1-4, 6 and 10-13 have been rejected under 35 U.S.C. 102(e) as being unpatentable
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`over U.S. Patent No. 5,892,900 to Ginter et al.
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`Ginter et al. do not anticipate the present invention as they do not disclose, among other
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`things, setting up a verification structure and verifying the program using the verification
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`structure as recited in the rejected claims.
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`Ginter et al. provide a system and method for secure electronic transaction management
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`and electronic rights protection. Ginter's method provides "machine bound" delivery of content
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`or software through what they call "Stationary Object" (col. 136, lines 64-66 and Fig 18). A
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`stationary object is an object bound to a specific machine. The main security measure used to
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`protect the content of a "Stationary Object" from illegal use is to encrypt it according to the
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`target's unique key (col. 137, lines 45-50).
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`"For example, a container that is bound by its control to a specific VDE node is called a
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`"stationary Object (see Fig 18)" (col. 136, lines 64-66). "Fig 18 shows an example of a
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`"stationary object" structure 850 provided by the preferred embodiment. 'Stationary Object"
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`structure is intended to be used only at specific VDE electronic appliance/installations that have
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`received explicit permissions to use one or more portions of the stationary object..." (col. 137,
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`lines 23-28)
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`"This private body (method) section 806 is preferably encrypted using one or more private body
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`keys contained in the separate permissions record 808. The data blocks 812 contain content
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`(information or administrative) that may be encrypted using one or more content keys also
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`provided in permissions record 808."
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`Accordingly, in Ginter et al., software distributed through a stationary object is encrypted
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`for the specific machine therefor "bound" to it. " Objects may be classified in one sense based on
`6
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`ANCORA_00000339
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 8 of 13
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`Amendmdni '
`• U.S. Application No.: 09/164,777
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`whether the protection information is bound together with the protected information" (Ginter,
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`col. 136, line 62).
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`Consequently, this method suffers from the deficiency that it is incompatible with free
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`"out of channel" or "retail channel" distribution. In the latter mode of operation, it is often
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`desired to broadcast a single version of the software to all the subscribers, rather than a machine
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`bound (and obviously different) version for each subscriber that is required by Ginter et al. In
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`other words, the "Stationary Object" aspect of Ginter has the shortcoming, among others, that it
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`cannot support a business model where the distributor doesn't know the final target machine.
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`Therefore, the system and method will not be able to freely distribute the software, such as
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`happens in retail and software companies that ships millions of copies.
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`Ginter itself acknowledges that the problem with "Stationary Objects" therefore suggests
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`a second method named "Traveling Objects" (col. 136, line 66 - co1.137, line 3, and fig. 19). A
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`"Traveling Object" is an object that contains the information needed to use its content:
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`"a container that is not bound by its control information to a specific VDE node but rather carries
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`sufficient control and permissions to permit its use, in a whole or in part, at any of several sites is
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`called a "Traveling Object" (Ginter, col. 136, line 66 - col. 137, line 3). A traveling object
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`allows shipping the content to unknown destinations by encrypting the content with the same key
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`again and again. However, Ginter uses an encryption technique in the "Traveling Object"
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`feature in which the key is incorporated in the distributed objects. Ginter acknowledge the
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`shortcomings of this solution to wit:
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`"In the case of a "traveling object", content owners may distribute information
`with some or all of the key blocks 810 included in the object 300 in which the
`content is encapsulated. Putting keys in distributed objects 300 increases the
`exposure
`to attempts
`to defeat security mechanisms by breaking or
`cryptoanalyzing the encryption algorithm with which the private header is
`protected (e.g., by determining the key for the header's encryption). This breaking
`of security would normally require considerable skill and time, but if broken, the
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`ANCORA_00000340
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`Amendment ' 1
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`U.S. Application No.: 09/164,777
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 9 of 13
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`•
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`algorithm and key could be published so as to allow large numbers of individuals
`who possess objects that are protected with the same key(s) and algorithm(s) to
`illegally use protected information. (Col. 139, lines 38 to 50)."
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`Ginter admits that this solution can thus be used only with limited type of software which
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`is not commercially valuable, to wit:
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`"As a result, placing keys in distributed objects 300 may be limited to content that
`is either "time sensitive" (has reduced value after the passage of a certain period
`of time), or which is somewhat limited in value, or where the commercial value of
`placing keys in objects (for example convenience to end-users, lower cost of
`eliminating the communication or other means for delivering keys and/or
`permissions information and/or the ability to supporting objects going "out-of
`channel") exceeds the cost of vulnerability to sophisticated hackers.
`(Col. 139,
`lines 50 to 59)."
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`The present invention differs from and overcomes the deficiencies associated with the
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`stationary object and traveling object methods described in Ginter et al. In the present invention,
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`a unique key is stored in the first non-volatile memory of the computer. A software program in
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`the volatile memory of the computer is selected. A license record is extracted from the software
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`program and encrypted using the unique key stored in the computer (see new independent claim
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`20). Thus, the software program is not machine bound as is required by the stationery object
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`method, nor is the same key used over and over to encrypt the software as is the case with the
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`traveling object. In the present method, the verification structure is formed by using a unique
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`key for each computer and license record information in the software.
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`Moreover, in col. 70, line 23 — col. 71, line 25 Ginter et al. describe the architecture as
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`add-on hardware which is named "SPU"(col. 63, line 66 — col. 64, line 15). Col. 64, lines 16-21
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`explicitly detail the fact that the SPU is a hardware add-on, not part of the PC. In col. 70 Ginter
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`et al. describes the memory architecture for the SPU and uses terms taken from the PC
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`engineering world. However, this is not referring to those actual PC components which name is
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`used in their design.
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`8
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`ANCORA_00000341
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 10 of 13
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`Amendment
`U.S. Application No.: 09/164,777
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`•
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`In view of the above, it is clear that Ginter et al do not describe the step of setting up a
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`verification structure. The portions of Ginter et al. referred to by the Examiner all describe the
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`elements of the proprietary hardware of Ginter et al. These portions of Ginter et al. do not
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`describe setting the verification structure in memory, they describe basic functionality of a
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`common CPU that loads code to memory and executes it.
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`Furthermore, it is clear that Ginter et al. do not describe the step of verifying the program
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`using the verification structure. There is no mention whatsoever in Ginter et al. in col. 70, lines
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`23-53 and col. 63, line 67 - col. 64, line 15 referred to by the Examiner of a process where a
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`software program verifies its authenticity using a license (verification structure) stored in the
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`second volatile non-volatile memory. The functionality described in these portions of Ginter et
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`al. is the different functionality that add-on hardware, referred to as SPU, can perform. There no
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`specific discussion as to how the functionality is performed and whether it is actually has
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`something to do with protecting software.
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`In contrast to Ginter et al., the present invention provides a system and method which not
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`only enables free distribution of the software (such as happens in retail stores, and software
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`companies that ship millions of copies), that overcomes the problems with the stationary object
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`in Ginter et al., but also does not suffer from the limitations of incorporating the key in the
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`distributed data as is the case with the traveling object of Ginter et al. Moreover, the steps of
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`setting up a verification structure and using that structure for verification are clearly recited in
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`the rejected claims
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`For example, independent claim 1 recites a method of restricting software operation
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`within a license limitation. The method is useful for a computer including a first, non-erasable,
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`non-volatile memory area, a second, erasable, non-volatile memory area, and a volatile memory
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`area. The first non-volatile memory accommodates data that includes unique key. According to
`9
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`ANCORA_00000342
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 11 of 13
`Amendment
`U.S. Application No.: 09/164,777
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`the method of the invention, a program residing in the volatile memory is selected. A
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`verification structure is set up in the second non-volatile memory. The verification structure
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`accommodates data that include at least one license record. The program is verified using at
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`least the verification structure. Based on the verification, the program is acted on accordingly.
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`Additionally, new independent claim 20 recites additional features not disclosed in Ginter
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`et al.
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`In claim 20, a method for restricting access to a software program is defined. The
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`method includes storing a pseudo-unique key in a first non-volatile memory area of a computer.
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`A software program residing in a volatile memory area of the computer is selected. License
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`information is extracted from the software program. The license information is encrypted using
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`the pseudo-unique key. The encrypted pseudo-unique key is stored in a second non-volatile
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`memory area of the computer. The software program is verified using based on the encrypted
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`pseudo-unique key and the software program is acted on based on the verification.
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`Thus, in the method recited in claim 20, license information is extracted from the
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`software program and encrypted using a key stored on the computer. Applicants review of the
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`cited references did not reveal any description of extracting information from a program,
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`encrypting the information using a key stored on the computer, and storing the encrypted
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`information on the computer. There is no description in the cited references of the steps of
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`"extracting license information from the software program" and "encrypting the license
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`information using the pseudo-unique key" as is recited in new claim 22.
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`No claim recitation can be ignored in determining anticipation. See Pac-Tex, Inc. v.
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`Amerace Corp., 14 U.S.P.Q.2d 187, (Fed. Cir. 1990). Anticipation requires the disclosure, in a
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`prior art reference, of each and every recitation as set forth in the claims. See Titanium Metals
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`Corp. v. Banner, 227 U.S.P.Q. 773 (Fed. Cir. 1985), Orthokinetics, Inc. v. Safety Travel Chairs,
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`10
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`ANCORA_00000343
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 12 of 13
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`Am.entlment
`• U.S. Application No.: 09/164,777
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`Inc. 1 U.S.P.Q.2d 1081 (Fed. Cir. 1986), and Akzo N.V. v. U.S. International Trade
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`Commissioner, 1 U.S.P.Q.2d 1241 (Fed. Cir. 1986).
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`There must be no difference between the claimed invention and reference disclosure for
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`an anticipation rejection under 35 U.S.C. 102. See Scripps Clinic and Research Foundation v.
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`Genentech, Inc., 18 U.S.P.Q.2d 1001 (CAFC, 1991) and Studiengesellschaft Kohle GmbH v.
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`Dart Industries, 220 U.S.P.Q. 841 (CAFC, 1984).
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`In view of the above discussion, it is clear that the cited reference does not teach each and
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`every element recited in the claims as required by 35 U.S.C. 102(e). Therefore, the withdrawal
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`of the rejection of claims 1-4, 6 and 10-14 under 35 U.S.C. 102(e) is respectfully requested.
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`Claims 5 and 7-9 have been rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Ginter et al. in view of Goldman et al.
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`Claims 5 and 7-9 depend from independent claim 1 and would patentable for at least the
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`reasons discussed above regarding independent claim 1.
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`Goldman et al. do not supplement Ginter et al. to teach or suggest the features as recited
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`in the rejected claims.
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`Claims 14 and 15 have been rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Ginter et al in view of Goldman et al.
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`Claims 14 and 15 have been canceled, rendering this rejection moot.
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`In view of the above discussion, it is clear that the cited references, taken alone of in
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`combination, do not render the present invention obvious. Therefore the withdraw of this
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`rejection is respectfully requested.
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`Attached hereto is a marked-up version of the changes made to the specification and
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`claims by the current amendment. The attached page is captioned "Version with markings to
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`show changes made."
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`11
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`ANCORA_00000344
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`Case 1:20-cv-00034-ADA Document 45-6 Filed 03/20/20 Page 13 of 13
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`•
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`Amertdment
`• U.S. Application No.: 09/164,777
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`In view of the foregoing, reconsideration and allowance of this application are believed in
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`order, and such action is earnestly solicited.
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`The Commissioner is authorized to charge any fee necessitated by this Amendment to our
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`Deposit Account No. 22-0261.
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`Respectfully submitted,
`
`VENABLE, Attorneys at Law
`
`Rolert Kinberg
`Registration No. 26,924
`P.O. Box 34385
`Washington, D.C. 20043-9998
`Telephone 202-962-4800
`Telefax 202-962-8300
`
`RK/JAIC/lrh
`#289169
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`12
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`ANCORA_00000345
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