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

Filing 247

NOTICE by Uniloc Singapore Private Limited, Uniloc USA, Inc. of Filing of Patent Rule 4-3 Joint Claim Construction and Pre-Hearing Statement (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Nelson, Edward)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
SONY CORPORATION OF AMERICA,
ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
DISK DOCTORS LABS, INC., ET AL.
Defendants.
UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
NATIONAL INSTRUMENTS CORP., ET
AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
ENGRASP, INC., ET AL.
Defendants.

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CASE NO. 6:10-CV-373
PATENT CASE

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CASE NO. 6:10-CV-471
PATENT CASE

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CASE NO. 6:10-CV-472
PATENT CASE

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CASE NO. 6:10-CV-591
PATENT CASE

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BMC SOFTWARE, INC., ET AL.
Defendants.

UNILOC USA, INC., ET AL.
Plaintiffs,
vs.
FOXIT CORPORATION, ET AL.
Defendants.

SYMANTEC CORPORATION, ET AL.
Plaintiffs,
vs.
UNILOC USA, INC., ET AL.
Defendants.

CASE NO. 6:10-CV-691
PATENT CASE

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vs.

CASE NO. 6:10-CV-636
PATENT CASE

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UNILOC USA, INC., ET AL.
Plaintiffs,

CASE NO. 6:11-CV-33
PATENT CASE

PATENT RULE 4-3 JOINT CLAIM CONSTRUCTION
AND PRE-HEARING STATEMENT
Plaintiffs, Uniloc USA Inc. and Uniloc Singapore Limited (“Uniloc”) have
asserted that Defendants Activision Blizzard, Inc., Adobe Systems, Inc., Aladdin
Knowledge Systems, Inc., Aladdin Knowledge Systems, Ltd., ApexSQL, LLC, Aspyr
Media, Inc., Autodesk, Inc., BMC Software, Inc., Borland Software Corp.,
ComponentOne, LLC, Digital River, Inc., eEye, Inc., Electronic Arts, Inc., FileMaker,
Inc., Foxit Corp., Freedom Scientific, Inc., Freedom Scientific BLV Group, LLC, GEAR
Software, Inc., GEAR Software Holdings, Inc., Intego, Inc., Intuit, Inc., Manifold Net
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Ltd., Markzware, McAfee, Inc., Microlead Corp., National Instruments Corp., Onyx
Graphics, Inc., Pervasive Software, Inc., Pinnacle Systems, Inc., Quinstar Corp., SafeNet,
Inc., Sage Software, Inc., SolarWinds, Inc., SolarWinds Worldwide, LLC, Sony Corp. of
America, Sony DADC US Inc., Stat-Ease, Inc., Symantec Corp., Tableau Software, Inc.,
Transmagic, Inc., Unity Technologies SF, Wildpackets, Inc., and Xtreamlock, Pty in the
above-numbered cases (collectively “Defendants”) infringe claims 1, 7-13, 15-16, and
19-201 (“Asserted Claims”) of U.S. Patent No. 5,490,216 (“the „216 Patent”).
Pursuant to Patent Rule 4-3 ands the Court‟s Docket Control Order, the parties
submit this joint claim construction statement and pre-hearing statement with respect to
the „216 Patent.
As shown in the attached charts, the Defendants intend to present arguments
regarding alleged disclaimer(s) resulting from the recently concluded reexamination.
There is a dispute as to whether such a disclaimer is or is not a new construction of
previously defined terms. The Defendants also seek to construe the term “local,” and
there is a dispute as to whether the term “local” has been previously construed by the
District Court for the District of Rhode Island. Uniloc‟s and Defendants‟ positions on
these issues are as follows:
Uniloc‟s Position: In this Statement, Defendants put forward new constructions
for two claim terms already construed by previous Courts (“local licensee unique ID
generating means” and “licensee unique ID”) and raise an issue that Defendants claim
would alter the construction of all previously construed claim terms (the Defendants‟

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Claim 20 has only been asserted against certain defendants.
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“disclaimer” issue).

Uniloc believes the submission of these claim terms and the

“disclaimer” issue to be impermissible. The Court‟s Docket Control Order states:
The Court prefers to minimize the time spent on previously construed terms. . . . .
The parties must seek leave and show good cause to submit previously construed
terms for construction.
Prior to the submission of this Statement, Defendants have not sought leave nor have they
shown good cause pursuant to the Court‟s Order regarding the two terms and
“disclaimer” issue in question.

Uniloc reads the Court‟s Docket Control Order as

applying to the re-submission of any previously construed claim term, regardless of the
reason of why it is being resubmitted. Given Uniloc‟s understanding, it has noted its
objections and positions in Exhibit A to this document where appropriate.
Finally, Uniloc notes that the positions attributed to it in Defendants‟ statement,
below, are not accurate and should not be relied upon by the Court.
Defendants‟ Position: The Defendants submit that leave is not necessary to
address the disclaimer issue because a disclaimer is not a modification of a prior claim
construction. On the contrary, the claim constructions provided by the District Court for
the District of Rhode Island reflect that Court‟s opinion as to how the claims should be
interpreted at the time the invention was made. The disclaimer argument, on the other
hand, reflects further limitations on any claim construction by virtue of arguments made
after issuance of the patent by Uniloc in order to save the patent from invalidity.
Moreover, the prior constructions could not have considered this disclaimer issue
for the simple reason that the arguments resulting in the disclaimer had not been made
at the time of the previous claim construction order.

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Therefore, to the extent that this Court holds that leave is necessary for the
disclaimer argument, the Defendants hereby do seek leave to address the disclaimer
point.
The Defendants further note that Uniloc does not dispute that the disclaimer
dispute – which arises from express representations made by Uniloc to the Patent Office,
in connection with the very recent reexamination (ie, subsequent to the prior claim
constructions), made to overcome preliminary findings by the PTO that all of the patent
claims were invalid -- raises new issues that could not have been raised in the prior claim
construction proceedings. Uniloc has already stated in writing that “Uniloc will not
oppose a motion seeking leave to have the Court consider this [disclaimer] issue during
the Markman process, provided . . . .” The proviso dealt with issues wholly unrelated to
the disclaimer dispute. The Defendants maintain that it is entirely inappropriate to hold
the disclaimer issue hostage to unrelated issues and contend that Uniloc‟s own statement
that it would not oppose motion for leave is sufficient grounds to have this Court hear the
disclaimer issue.
With respect to the term “local” in the phrase “local licensee unique ID generating
means,” Defendants disagree with Uniloc‟s position that this term has already been
construed by previous Courts. Rather, the phrases “local licensee unique ID generating
means” and “remote licensee unique ID generating means” were given the exact same
construction without construing the limitations “local” or “remote.”

Therefore,

Defendants submit that leave is not necessary to construe the term “local” in the context
of “local licensee unique ID generating means.” However, to the extent this Court holds

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that leave is necessary to construe “local,” the Defendants hereby do seek leave to
construe “local.”
(a)

Agreed Constructions*

The parties stipulate that the previous constructions for the following
terms/phrases should be adopted subject to the following three qualifications by the
Defendants:
1.

The Defendants dispute that the terms “licensee unique ID”,

“security key”, “registration key”, and “enabling key” were properly construed by the
District Court for the District of Rhode Island and contend that the term should have been
construed to mean “A unique identifier associated with a licensee that is generated, at
least in part, from personal information and not merely computer-related or softwarerelated information.” This construction is the construction that the dissent believed was
correct in Uniloc I. 290 Fed. Appx. 337 (Fed. Cir. 2008). However, this Court stated that
it would be adopting the prior constructions subject to the parties‟ preservation of rights
of appeal, as stated in this Court‟s Memorandum and Order, dated 5-20-2011. We
therefore present this argument (based on the reasoning of the dissent) to preserve our
rights to appeal this issue to the Federal Circuit. Should the Court wish to hear argument
on this construction, the Defendants are willing to argue for this construction.
2.

The Defendants submit that all constructions below are subject to

any disclaimer made by Uniloc during prosecution of the reexamination of the patent-insuit.

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3.

Defendant Pervasive does not join the stipulation as to the first

term in the table below and will be moving for leave to append an additional phrase to the
previous construction.
Term/Phrase

1

Previous/Agreed* Construction
*Agreed subject to the three
qualifications above
A unique identifier associated with a
licensee

“Licensee Unique ID”
“Security key”
“Registration key”
“Enabling key”

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“Information uniquely descriptive
of an intending licensee”

Information that is uniquely associated with
a person who intends to become a licensee
so as to access full functionality of the
digital data

“Information…which uniquely
identifies an intended registered
user
“Local licensee unique ID
generating means”

Function: to generate a local or remote
licensee unique ID/registration key.

“Remote licensee unique ID
generating means”

3

Structure: a summation algorithm or a
summer and equivalents thereof

“Registration key generating
means”
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“Algorithm”

Any set of instruction that can be followed
to carry out a particular task

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“Includes the algorithm utilized by
said local licensee unique ID
generating means to produce said
licensee unique ID”

Includes the identical algorithm used by the
local licensee unique ID generating means
to produce the licensee

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“generated by a third party means
of operation of a duplicate copy of
said registration key generating

Generated by a third party's use of a
duplicate copy of the registration key
generating means
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means”
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“Use mode”

A mode that allows full use of the digital
data or software in accordance with the
license

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“Fully enabled mode”
“full version run”

A mode/version that allows full use of the
digital data or software in accordance with
the license

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“Partly enabled” or “demonstration
mode”

A mode that allows partial use of the digital
data or software

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“Mode switching means”

Function: to permit the digital data or
software to run in a use mode/fully enabled
mode of the locally generated licensee
unique ID/registration key matches with the
remotely generated licensee unique
ID/enabling key.

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Structure: program code which performs a
comparison of two numbers or a comparator
and equivalents thereof.
“Has matched”
A comparison between locally generated
licensee unique ID/registration key and the
remotely generated licensee unique
ID/enabling key shows that the two are the
same
“Mode switching means will permit The mode switching means will permit the
said data to run in said use mode in data to run in the use mode only if the
subsequent execution only if said
platform unique ID is identical to what it
platform unique ID has not
was the previous time the digital data were
changed”
run

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“Registration system”

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“Provided to said mode-switching
means by said intending user “

A system that allows digital data or
software to run in a use mode on a platform
if and only if an appropriate licensing
procedure has been followed
Provided to the mode-switching means by
the person who intends to become a licensee

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“Communicated to said intending
user”

Communicated to the person who intends to
become a licensee

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“Checking by the registration

Verification by the registration authority
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authority that the information
unique to the user is correctly
entered”

that information unique to the user and
entered by the user is accurate

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“Wherein said registration system
is replicated at a registration
authority”

Wherein the registration system attachable
to software to be protected is reproduced
exactly at the registration authority

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“Serial number”

A number that is one of a series

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“Platform unique ID generating
means”

Function: to generate a platform unique ID.
Structure: a summation algorithm or a
summer and equivalents thereof.

(b)

Disputed Claim Terms

Uniloc‟s proposed construction for each disputed claim term from the „216 Patent,
as well as its identification of supporting evidence, is set forth in Exhibit A.

The

Defendants‟ proposed construction or position for each disputed claim term from the „216
Patent, as well as their identification of supporting evidence, is set forth in Exhibit B.
(c)

Time for Claim Construction Hearing

The parties believe that 3 hours (1.5 hours for Uniloc and 1.5 hours for
Defendants) will be sufficient for the claim construction hearing.
(d)

Witnesses

No party intends to call any witnesses to testify on issues regarding claim
construction.
(f)

Other Issues

The parties are not aware of any other issues that should be taken up at a prehearing conference before the claim construction hearing.

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Dated: August 29, 2011

By:
/s/ Edward R. Nelson, III
Edward R. Nelson, III
Texas State Bar No. 00797142
Barry J. Bumgardner
Texas State Bar No. 24041918
Steven W. Hartsell
Texas State Bar No. 24040199
S. Brannon Latimer
Texas State Bar No. 24060137
Jaime K. Olin
Texas State Bar No. 24070363
NELSON BUMGARDNER CASTO, P.C.
3131 West 7th Street, Suite 300
Fort Worth, Texas 76107
[phone]
[phone] (fax)
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
T. John Ward, Jr.
Texas State Bar No. 00794818
J. Wesley Hill
Texas State Bar No. 24032294
WARD & SMITH LAW FIRM
111 West Tyler St.
Longview, Texas 75601
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
ATTORNEYS FOR PLAINTIFFS
UNILOC USA, INC. AND
UNILOC SINGAPORE PRIVATE
LIMITED

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CERTIFICATE OF SERVICE
I hereby certify that on the 29th day of August 2011, I electronically filed the
foregoing document with the clerk of the court for the U.S. District Court, Eastern
District of Texas, Tyler Division, using the electronic case filing system of the court. The
electronic case filing system sent a “Notice of Electronic Filing” to the attorneys of
record who have consented in writing to accept this Notice as service of this document by
electronic means.
/s/ Edward R. Nelson, III

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