Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al

Filing 243

Opposed MOTION for Leave to Construe Previously Construed Term by Pervasive Software, Inc.. (Attachments: # 1 Exhibit A (Rosenblatt Declaration), # 2 Exhibit B (Proposed Claim Construction), # 3 Text of Proposed Order)(Huston, Charles)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA., INC., et al.
Plaintiffs,
v.
NATIONAL INSTRUMENTS CORP., et al.
Defendants.

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CIVIL ACTION NO. 6:10-CV-00472-LED

JURY TRIAL DEMANDED

MOTION FOR LEAVE TO CONSTRUE PREVIOUSLY CONSTRUED TERM
Defendant Pervasive Software hereby moves for leave for this court to construe the claim
term “licensee unique ID.” This term was construed in the previous Microsoft litigation: Uniloc
USA, Inc. v. Microsoft Corp., 447 F. Supp.2d 177 (D.R.I. 2006), 290 F.App’x 337 (Fed. Cir.
2008) (No. 2008-1121) (non-precedential), 640 F. Supp.2d 150 (D.R.I. 2009), 632 F.3d 1292
(Fed. Cir. 2011).
In the Microsoft litigation, it was recognized that “licensee unique ID” could not include
solely platform-related information.

Uniloc I, 290 Fed.App’x at 342-43. (“Microsoft is,

however, correct that the licensee unique ID cannot be based solely on platform-related user
information.” citing the Wolfe ‘220 patent and the ‘216 patent at 1:60-65). However, neither the
Rhode Island District Court nor the Federal Circuit in the Microsoft litigation reached the issue
of what constitutes “solely platform related information.” Pervasive’s proposed construction of
“licensee unique ID” does not conflict with the previous constructions, but clarifies the exclusion
of “platform-related user information.” Pervasive does not seek to clarify the previous court
rulings that the terms “licensee unique ID,” “security key,” “enabling key,” and “registration
key” are synonymous.

The prior art clearly details the use of a software serial number or hardware configuration
information or both as information used by a local computer to obtain a license key or
authorization to use the software installed on the local computer. For example, the Wolfe ‘220
patent shows how software serial numbers are generated and assigned. Wolfe 4:49-62. The ‘220
Wolfe patent shows a unique key/software serial number sent from the local computer to a
remote licensing server. ‘220 Wolfe 5:10-25. A hardware configuration code for the local
computer is also generated and sent to the remote licensing server. ‘220 Wolfe 5:1-10. The
hardware configuration code may be based on an algorithm. Wolfe 5:33-40. The software serial
number or hardware configuration code can be encrypted for secure communication to the
remote licensing server if desired. ‘220 Wolfe 6:7-9, 7:1-4. See also, Hellman ‘093 6:3-8, Fig. 2,
6:62-7:2; Grundy ‘598, 12:36-38, 18:25-33, 14:39-42, 15:13-16, 18:20-25 Fig. 3, Fig. 5 and 6.
The prior art of record in this case is intrinsic evidence. V-Formation v. Benetton Group
& Rollerblade, Inc., 401 F.3d 1307 (Fed. Cir. 2005) (“This court has established that "prior art
cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence.
… “) Therefore, the analysis by this court and the parties in construing the term “licensee unique
ID” will be confined to the intrinsic evidence.
In view of the clear teachings in the prior art showing the use of a software serial number
or hardware configuration information or both as information used by a local computer to obtain
a license key or authorization to use the software, any claim construction that reads on such prior
art disclosure would render the claim invalid. A claim should be construed in view of the
specification and prosecution history, which includes the prior art. The prosecution history and
prior art provide evidence on how the Patent Office and Inventor understood the invention.
Phillips v. AWH Corporation, 415 F.3d 1303, 1317 (Fed. Cir. 2005). Here, the patent-in-suit has

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just finished reexamination in the patent office – offering new evidence of how the inventor and
the Patent Office understood the claimed invention in view of the prior art. In fact, Plaintiff has
just produced today a Declaration by its expert, William Rosenblatt, opining as to the necessity
for the Patent Office to address claim construction in Reexamination and his understanding of
the meaning of the term “licensee unique ID.” (Rosenblatt Declaration, paras. 15 – 28, copy
attached as Exhibit A.) Defendants should be permitted to have this court consider the prior art
and such new evidence.
A court should construe a term if there is an actual dispute concerning the term. "When
the parties raise an actual dispute regarding the proper scope of these claims, the court, not the
jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the
scope of a claim term, it is the court's duty to resolve it." O2 Micro v. Beyond Innovation, 521
F.3d 1351 (Fed. Cir. 2008).
In view of the foregoing, Defendant, Pervasive Software requests this court to construe
the claim term “licensee unique ID.” A proposed claim construction is attached to this motion as
Exhibit B.
Dated: August 29, 2011

Respectfully submitted,

By: /s/ Charles D. Huston
Charles D. Huston
State Bar No. 10328950
Stacy L. Zoern
State Bar No. 24051565
DAFFER MCDANIEL, LLP
700 Lavaca Street, Suite 720
Austin, TX 78701
Tel. [phone]
Fax [phone]
ATTORNEYS FOR PERVASIVE
SOFTWARE INC.

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CERTIFICATE OF SERVICE
The undersigned certifies that on August 29, 2011 all counsel of record who are deemed to
have consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system pursuant to Local Rule CV-5(a)(3)(A).
/s/ Charles D. Huston
Charles D. Huston

CERTIFICATE OF CONFERENCE
I certify that counsel have complied with the “Meet and Confer” Requirement set forth
under L.R. CV-7(h). During a teleconference with Plaintiffs’ counsel on August 25, 2011, a
discussion regarding Defendant Pervasive Software’s request to construe the claim term
“licensee unique ID” resulted in an impasse, leaving an open issue for the Court to resolve.
/s/ Charles D. Huston
Charles D. Huston

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