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)

EXHIBIT B

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A. Defendants’ Proposed Constructions and Supporting Evidence for the Disputed Terms
Pursuant to P.R. 4-3(b), Defendants‟ proposed constructions and supporting evidence for the disputed terms of the ‟216 Patent are found in
the following tables. Because Defendants‟ have not reached unanimous agreement on certain claim terms, competing constructions are provided in
the various tables below. In addition, Pervasive Software, Inc. believes that the term “Licensee Unique ID” should be further modified by this Court
and is moving for leave to provide a modification to the construction provided by the District of Rhode Island during the upcoming claim
construction process:
Defendant Group A comprises all Defendants EXCEPT those found in Group B

1

DISPUTED
TERMS AND PHRASES
Permits use of said digital
data...only if...has matched . .
.

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION
When . . . has matched then the use of said
digital data is permitted

SUPPORTING EVIDENCE
“The algorithm in the code portion is duplicated at a
remote location on a platform under the control of the
licensor or its agents, and communication between
the intending licensee and the licensor or its agent is
required so that a matching registration number can
be generated at the remote location for subsequent
communication to the intending licensee as a permit
to licensed operation of the digital data in a use
mode.” ‟216 patent, Abstract.
“In broad terms, the system according to the
invention is designed and adapted to allow digital
data or software to run in a use mode on a platform if
and only if an appropriate licensing procedure has

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
been followed.” ‟216 patent, col. 2:52-55.
“Accordingly, in one broad form of the invention
there is provided a system for licensing use of digital
data in a use mode, the digital data executable on a
platform, the system including local licensee unique
ID generating means and remote licensee unique ID
generating means, the system further including mode
switching means operable on the platform which
permits use of the digital data in the use mode on the
platform only if a licensee unique ID generated by
the local licensee unique ID generating means has
matched a licensee unique ID generated by the
remote licensee unique ID generating means.” ‟216
patent, col. 3:22-32.
“In a further broad form of the invention, there is
provided a method of control of distribution of
software, the method comprising providing modeswitching means associated with the software
adapted to switch the software between a fully
enabled mode and a partly enabled or demonstration
mode; the method further comprising providing
registration key generating means adapted to generate
an enabling key which is a function of information
unique to an intending user of the software; the
mode-switching means switching the software into
fully enabled mode only if an enabling key provided
to the mode-switching means by the intending user at
the time of registration of the software has matched
identically with the registration key generated by the

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
registration key generating means.” ‟216 patent, col.
4:30-43.
“Preferably, the registration code when executed on
the platform provides local licensee unique ID
generating means whereby the digital data can be
switched from the demonstration mode to the use
mode by execution of the registration code only if a
licensee unique ID generated by the local licensee
unique ID generating means has matched a licensee
unique ID generated by remote licensee unique ID
generating means.” ‟216 patent, col. 4:55-62.
“FIGS. 2a, 2b and 2c are segments of a flow chart of
the procedure to be followed during registration of
software by a user according to a first embodiment of
the invention.” ‟216 patent, col. 5:5-7; see also Figs.
2a, 2b and 2c and accompanying text at col. 6:34 –
8:38.
“FIG. 8 is a block diagram of a generalized system
according to a fifth embodiment of the invention.”
‟216 patent, col. 5:20-21; see also Fig. 8 and
accompanying text at col. 11:39 – 12:37.
“It is to be understood that, in its various
embodiments, the present invention is for the
protection of digital code/software by control of
permission to use the digital code/software.” ‟216
patent, col. 5:33-36.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“With reference to FIGS. 1 and 8, the system
according to embodiments of the invention is
designed and adapted to allow digital data 39 or
software to run in a use mode on a platform 31 if and
only if an appropriate licensing procedure has been
followed.” ‟216 patent, col. 5:47-51.
“As a final stage in registration (refer to FIG. 2d [sic
– 2c]), the registration authority 16 provides the
registration number generated by the registration
authority PC 15 to the user 11. The user 11 enters the
registration number into the user PC 12 where the
registration routine checks to see whether the entered
registration number matches the calculated
registration number. If the two match, then a valid
registration has taken place and access is provided by
the registration routine to a full operating version of
the software protected by the registration routine. If
there is no match and a preference file (which stores
the user details) does not exist then a dialogue box D
(FIG. 2c) appears on the display 13 of user PC 12
providing the prospective new user 11 with the
opportunity to check his/her details or switch to the
demonstration version of the software protected by
the registration routine.” ‟216 patent, col. 7:36-50.
“When mode switcher 68 verifies the match, then the
mode switcher 68 allows execution on platform 31 of
the full user program 39.” ‟216 patent, col. 11:63-65.
“Second gate 92 permits execution of any kind of

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
code by closure of relay 93 provided only that the
output of comparator 90 is high (which is to say that
X equals Y or that the local licensee unique ID
matches with the licensee unique ID generated by the
remote licensee unique ID generating means
comprising summer 89).” ‟216 patent, col. 13:31-36.
“Because additional information is added at the
remote computer in Grundy, it follows automatically
that a simple comparison or match of the registration
code derived from the local computer and the
authorization code derived from the remote computer
is not possible. In order for the local computer to
deem the authorization code as valid, the local
computer is required to somehow take account of the
additional information which has been added by the
remote computer. Grundy does not describe precisely
how this is achieved, but it is clear that the validity of
the authorization code of Grundy cannot be
determined as a simple match of the registration code
with the authorization code. Accordingly, Claim 1 of
the present application which requires a match of the
local license unique ID with the remote licensee
unique ID is patentably distinguished over the
fundamentally more complex process outlined in
Grundy.” ‟216 file history, 12/21/94 Amendment in
Response to June 24, 1994 Office Action at 4-5.
“It is not at all clear from the disclosure of Grundy as
to whether the previously derived “Registration
Code" is ever utilized to help check the validity of the

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
Authorization Code: one is perfectly entitled to infer
from the total disclosure of Grundy that any element
of uniqueness to be associated with the software to be
protected is injected and derived at the second
platform (the remote location) and, furthermore, that
whether an Authorization Code is valid or not derives
directly from data first arising at the second platform
(the remote location). This is the complete reverse of
the system of the present invention where the
uniqueness derives entirely locally.” ‟216 file
history, 7/5/95 Amendment in Response to March 30,
1995 Office Action at 7.
“In addition, the Grundy system requires a
mechanism for encrypting the registration code for its
return trip from the second platform to the first
platform: Applicant respectfully submits that the
encryption key is the „User Code‟ generated at the
second platform. Without the communication of the
encryption key (the user code) to the first platform it
will not be possible to decrypt the authorization code
and hence, it will not be possible to make any use of
the authorization code for validation purposes.
Advantageously, the system of the claimed invention
does not require that an encryption key be passed
from the second platform to the first platform. The
Examiner states that „the Grundy local decodes the
authorization code which then must match the
original user data.‟ It is respectfully submitted that
Grundy does not disclose a mechanism for decoding
the authorization code, hence it follows that Grundy

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
does not disclose a mechanism by which there can be
a match with original user data. Therefore, by a
mechanism not specifically disclosed in Grundy, the
„Unique User Code‟ must, somehow, be
communicated to the first platform because it
amounts to a decryption key without which no useful
information can be derived from the authorization
code. By contrast, the invention of the present
application does not require any decryption key to
pass from the second platform (the remote location)
to the first platform (the local location) because the
same algorithm is used at both locations. This feature
is now clearly included in all proposed main claims,
and, it is submitted, patentably distinguishes the
present invention over Grundy.” ‟216 file history,
7/5/95 Amendment in Response to March 30, 1995
Office Action at 8-9; see also id. at 6-7.
“The local and remote licensee unique IDs are
compared and if they match identically, the system
will allow licensed operation (e.g., full, unrestricted
use) of the software.” ‟216 reexam history, 11/29/10
Reply to Office Action in Ex Parte Reexamination at
12.
“If the remote licensee unique ID identically matches
the local licensee unique ID then the system will
allow licensed operation of the software.” ‟216
reexam history, 11/29/10 Declaration of Ric B.
Richardson Under 37 C.F.R. § 1.132 at ¶ 6.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“Of the other art of record, the only one that suggests
that use of user-specific information in the
computation of fields is Grundy. The Patent Owner
has persuasively argued that the summation disclosed
by Grundy is used in the context of merely verifying
the correctness of information related to the user and
is not being used to generate an ID per se. Since the
information is not being used for the same purpose,
one skilled in the art therefore would not use the
algorithm of Grundy as part of the generation of the
claimed licensee unique ID.” ‟216 reexam history,
8/5/2011 Notice of Intent to Issue Ex Parte
Reexamination Certificate at 6.

2

Local (in the phrase “local
licensee unique ID generating
means”)

On the user‟s computer executing the digital
data

Local licensee unique ID shown at “Local Licensee
Location.” ‟216 patent, FIG. 8.
“an environment to be associated with a computing
device such as a microprocessor or other data
processing device which permits execution of the
digital data….” ‟216 patent, col. 2:25-27.
“The prospective new user 11 inserts disk 10 into the
user PC 12 so as to be read by PC 12.” ‟216 patent,
col. 6:39-41.
“This information, unique to the user, is passed
through a registration number algorithm 14… which
generates a registration number….” ‟216 patent, col.
7:14-17.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“The distinction as against the first embodiment is
that the „key file‟ is created at the time of registration
of the software and a duplicate key file is also created
at the same time.” ‟216 patent, col. 8:50-53.
“… form a microprocessor 30 adapted to operate
under an operating system or upon a platform 31 such
as, for example MicroSoft DOS or Macintosh System
7.” ‟216 patent, col. 10:18-20.
“The digital data 37 is arranged in such a way that
when microprocessor 30 seeks to first execute the
digital data 37 by way of operating system or
platform 31 the digital data comprising the
registration code portion 38 is caused to execute
first….” ‟216 patent, col. 10:30-34.
“[T]he algorithm, which generates the unique user
identification and which is resident both as a the
registration code portion 38 in digital data 37
integrally bound to use code portion 39 for execution
on local platform 31 and also as remote algorithm
61….” ‟216 patent, col. 11:46-50.
“[A] prospective user 80 of digital code 81 on media
82 by its execution on platform 83 firstly inserts the
media 82 into an appropriate digital code reading
device within the platform….” ‟216 patent, col.
12:46-49.
“[T]he Applicant submits herewith redrafted claims,

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
the main claims of which include, broadly, the
following two distinguishing limitations: (a) The
„Licensee Unique ID‟ on which the registration
system relies for matching for verification purposes is
generated locally….” ‟216 file history, 6/30/95
Response at 6.
“[T]he „Licensee Unique ID‟ is entirely the product
of data generated locally as distinct from data added
before delivery of the software to the local location
for use… or subsequently from a remote location….”
‟216 file history, 6/30/95 Response at 6-7.
“A direct comparison for matching purposes of the
licensee unique ID at the local location….” ‟216 file
history, 6/30/95 Response at 8.
Pic of “local system” which is a user‟s computer
containing local licensee unique ID. ‟216 reexam
history, Slide 5 of Presentation at1087.
“Local Licensee Unique ID Generation” is “A unique
identification generated locally….” ‟216 reexam
history, Slide 7 of Presentation at1089.
“[P]roduced locally and remotely.” ‟216 reexam
history, Slide 31 of Presentation at1113.

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3

DISPUTED
TERMS AND PHRASES
Comprises part of said digital
data when executed on said
platform

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION
Entirely contained in said digital data when
executed on said platform

SUPPORTING EVIDENCE
“A registration system 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.
Preferably, the system detects when part of the platform
on which the digital data has been loaded has changed in
part or in entirety, as compared with the platform
parameters, when the software or digital data to be
protected was last booted or run. The system relies on a
portion of digital data or code which is integral to the
digital data to be protected by the system. This integral
portion is termed the code portion and may include an
algorithm that generates a registration number unique to
an intending licensee of the digital data based on
information supplied by the licensee which characterizes
the licensee.” ’216 patent, Abstract.

“The system relies on digital data or code which forms
part of the digital data to be protected by the system.
This portion of the digital data which preferably is integral
to the digital data to be protected has been termed the
‘code portion’ elsewhere in this specification. The code
portion includes an algorithm adapted to generate a
registration number which is unique to an intending
licensee of the digital data based on information supplied
by the licensee which characterizes the licensee.” ’216
patent, col. 2:61-3:2.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“Preferably, the code portion is integral with the
digital data and can be identical for all copies of the
digital data. It is the algorithm embedded within the
code portion (and which is duplicated at the remote
location) which provides a registration number which
can be „unique‟ if the information provided by the
intending licensee upon which the algorithm relies
when executed upon the platform is itself „unique.‟”
‟216 patent, col. 3:10-17.
“Accordingly, in one broad form of the invention
there is provided a system for licensing use of digital
data in a use mode, the digital data executable on a
platform, the system including local licensee unique
ID generating means and remote licensee unique ID
generating means, the system further including mode
switching means operable on the platform which
permits use of the digital data in the use mode on the
platform only if a licensee unique ID generated by
the local licensee unique ID generating means has
matched a licensee unique ID generated by the
remote licensee unique ID generating means.” ‟216
patent, col. 3:22-32.
“Preferably, the platform unique ID generating means
forms part of the digital data.” ‟216 patent, col. 3:5455.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“The system relies on digital data or code 38 which
forms part of the digital data to be protected by the
system. This portion of the digital data, which
preferably is integral to the digital data to be
protected, has been termed the code portion 38
elsewhere in this specification. The code portion 38
includes an algorithm adapted to generate a
registration number 66 or local licensee unique ID or
registration key which characterizes the licensee. In
this instance, the local licensee unique ID generator
which generates the registration number comprises
the execution of code 38 on platform 31.” ‟216
patent, col. 3:57-67.
“Preferably, the code portion 38 is integral with the
digital data and can be identical for all copies of the
digital data. It is the algorithm embedded within the
code portion (and which is duplicated at the remote
location) which provides a registration number which
can be „unique‟ if the information provided by the
intending licensee upon which the algorithm relies
when executed upon the platform is itself „unique‟.”
‟216 patent, col. 6:15-22.
“The digital data 37 includes registration code
portion 38 and use code portion 39.” ‟216 patent, col.
10:28-29, and Figure 5.

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DISPUTED
TERMS AND PHRASES

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION

SUPPORTING EVIDENCE
“It will be appreciated that the registration code
portion 38 effectively forms simply a part of the
software or digital data 37 to be protected/registered
and that the digital data 37 will be or can be identical
for all copies of the word processing program
produced. The registration code portion 38 allows a
unique link to be made between the digital data 37
and an individual authorized or licensed to use the
digital data 37 by way of initial execution of a copy
of the digital data comprising registration code
portion 38.” ‟216 patent, col. 10:53-61, and Figure 5.
“The system illustrated in FIG. 8 operates in the
manner generally described in respect of previous
embodiments and as generally outlined in the
diagram. In the context of the block C illustrated in
FIG. 4, and with reference to FIG. 9, the algorithm,
which generates the unique user identification and
which is resident both as the registration code portion
38 in digital data 37 integrally bound to use code
portion 39 for execution on local platform 31 and
also as remote algorithm 61, is attached to
registration database program 62 for execution on the
remote platform 63.” ‟216 patent, col. 11:43-52, and
Figure 8.

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DISPUTED
TERMS AND PHRASES
Prosecution History
Disclaimer Applicable To All
Claims

4

DEFENDANT GROUP A’S PROPOSED
CONSTRUCTION
The licensee unique ID/security key cannot
be generated by a checksum, summation
algorithm, summer, or equivalent thereof,
used to test data integrity.1

SUPPORTING EVIDENCE
See Attachment 1 To Exhibit B

Defendant Group B (comprising Defendants Aspyr Media, Inc., Borland Software Corp., Digital River, Inc., GEAR Software,
Inc. and GEAR Software Holdings, Inc.)
DISPUTED
DEFENDANT GROUP B’S PROPOSED
SUPPORTING EVIDENCE
TERMS AND PHRASES
CONSTRUCTION
Note: Defendant Group B incorporates herein the proposed constructions and supporting evidence for disputed terms and phrases 1 through
4 noted above, and adds the following prosecution history disclaimer.
5 Prosecution History
The licensee unique ID generated by the means
See Attachment 2 to Exhibit B
Disclaimer Applicable To All recited in each of the claims must be derived from
Claims
at least one piece of information that is specific to
the user, such as name, billing information, or
product information unique to the installation
entered by the user. The information cannot be
specific to the computer or independently
generated by the computer.2

1

By arguing that there has been a disclaimer based on the reexamination file history, the Defendants maintain, and do not waive, the additional argument that, independent of the
disclaimer, the claims as previously construed do not cover the disclaimed subject matter.
2

By arguing that there has been a disclaimer based on the reexamination file history, the Defendants maintain, and do not waive, the additional argument that, independent of the
disclaimer, the claims as previously construed do not cover the disclaimed subject matter.

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ATTACHMENT 1 TO EXHIBIT B
(Evidentiary Support For Prosecution History Disclaimer)
Intrinsic Evidence in support of the following disclaimer from the reexamination file history: the licensee unique ID/security key cannot be
generated by a checksum, summation algorithm, summer, or equivalent thereof, used to test data integrity.



Grundy does not cure this deficiency of Hellman. The Office alleges that the unique identifier associated with the licensee is disclosed by
Grundy‟s “checksum.” But Grundy’s checksum is solely used to verify the accuracy of user-entered information-it is not a unique
identifier associated with a licensee.
(Reply to Office Action, filed Nov. 29, 2010, p. 18 (emphasis added)).



Thus, Grundy’s “checksum” is not uniquely associated with an intended licensee. Rather, Grundy‟s checksum can only be used to indicate
whether the user (i.e., the intended licensee) correctly entered the requested data.
(Reply to Office Action, filed Nov. 29, 2010, pp. 18-19 (emphasis added)).



However, Grundy‟s checksum cannot meet these limitations as it cannot be equated to claim 1‟s “licensee unique ID.” As explained more
fully below, Grundy’s checksum is used for nothing more than verifying that the licensee correctly entered data. It is not uniquely
associated with any intended licensee and cannot be used to identify any intended licensee.
(Reply to Office Action, filed Nov. 29, 2010, p. 26 (emphasis added)).
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4658559 v3



Thus, Grundy uses the checksum of the user data as an indicator that the user data has been correctly entered. Grundy does not teach or
suggest that the checksum, or the registration code that includes the checksum as one of the fields, represents a unique identifier associated
with intended registered user.
(Reply to Office Action, filed Nov. 29, 2010, p. 27 (emphasis added)).



A person of ordinary skill in the art would understand “checksum” to represent a small number of check digits that are typically appended
to data in order to ensure the data’s integrity when it is stored or transmitted. To calculate a checksum of some data, the data is added up
(e.g., broken up into C-byte chunks, where C is a small number such as 1, 2, 4, or 8, and summed); the sum is chopped to a fixed length (e.g.,
a byte or C bytes) and appended to the data before storage or transmission. Checksum algorithms used in practice are variations on this
scheme. When the data is received or retrieved later, the checksum is re-calculated to ensure that the result is the same as the original
checksum; if the result differs then the data must have been corrupted. (See, Rosenblatt Dec., ¶52.)
(Reply to Office Action, filed Nov. 29, 2010, p. 27 (emphasis added)).



A checksum is therefore much smaller in length than its input data. For example, a 16-bit (2-byte) or 64-bit (8-byte) checksum may be
calculated on thousands, millions, or billions of bytes of data. This fulfills the checksum’s intended purpose well, given that most errors in
data storage or transmission are small and localized, making it highly likely that the resulting checksum will differ from the one originally
calculated, and extremely unlikely that corrupted data will produce the same checksum as the original one. For example, if one or two bits
are altered, the checksum will differ. (See, Rosenblatt Dec., ¶56.)
(Reply to Office Action, filed Nov. 29, 2010, p. 27 (emphasis added)).



Therefore, a checksum cannot preserve the uniqueness of the input data. Grundy shows the input data to the checksum routine in Fig. 2,
212, “ENTER NEW USER DETAILS.” This is “new user data, such as the user‟s name, address and telephone number” (Grundy at 12:3738.) Such data might take up roughly a hundred bytes of data. A checksum of this data would not preserve its uniqueness; many different
sets of user data could produce the same checksum. Therefore the checksum is not a generator of unique identifiers. (See, Rosenblatt
Dec., ¶62.)
(Reply to Office Action, filed Nov. 29, 2010, p. 27 (emphasis added)).



As previously discussed, a checksum cannot preserve the uniqueness of the input data and thus the checksum is not a generator of unique
identifiers. (See, Rosenblatt. Dec., 62.)
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4658559 v3

(Reply to Office Action, filed Nov. 29, 2010, p. 32 (emphasis added)).


But as fully discussed above with respect to independent claim 1, a checksum is not unique and therefore cannot be a unique identifier
associated with a licensee. Specifically, Grundy is not using the checksum to represent a security key, but rather uses the checksum of the
user data as an indicator that the user data has been correctly entered. Grundy does not teach or suggest that the checksum represents a
unique identifier of an intended registered user.
(Reply to Office Action, filed Nov. 29, 2010, p. 33 (emphasis added)).



“These fields, however, are checksums. Checksums are not unique fields, even if there [sic] are at least in part derived from unique data. It is
NOT agreed that a reasonable examiner would have found this reference important in determining the patentability of claims 1-20.” (Order
Granting/Denying Request for Ex Parte Reexamination, pg. 9, emphasis added)
Patent Owner Agrees
(Uniloc Powerpoint slides presented to Examiner during Nov. 17, 2010 Examiner Interview, slide 36).



Checksum is not unique and does not uniquely identify an intended registered user
(Uniloc Powerpoint slides presented to Examiner during Nov. 17, 2010 Examiner Interview, slide 37).



Uniloc submits that based on the Examiner‟s statement in the Order, Grundy’s data validation checksums do not produce a unique ID that
could be used by Hellman.
(Reply to Office Action, filed Mar. 18, 2011, p. 15).



Uniloc also argued that Grundy‟s checksum did not generate “a licensee unique ID” because Grundy‟s checksum algorithm, by its very
nature, destroys any uniqueness.
(Reply to Office Action, filed Mar. 18, 2011, p. 16).
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4658559 v3



As Dr. Pooch explains that “Grundy ... describes several conventional uses for checksums.” (Pooch Dec. 8.) For example, “the checksums
described in Grundy are not cryptographic functions, but rather appear to be used to check, for example, for typographical data entry
errors or transmission errors.” (Pooch Dec., 32.)
(Reply to Office Action, filed Mar. 18, 2011, p. 31).



In the rejection of claim 1 on page 14, on the other hand, the Examiner proposes to replace Hellman‟s cryptographic function generator 38
with the checksum of Grundy to provide the summation algorithm limitation absent from the teachings of Hellman. (Second Action, p. 15;
bottom.) However, if these references are combined as the Examiner suggests, with Grundy’s error-checking checksum replacing
Hellman’s cryptographic function generator, the Examiner can no longer take credit for the “uniqueness” feature provided by Hellman
because the source of that uniqueness, the one-way compressive hash function having a 100:1 X/Y bit ratio, would also be replaced by
Grundy’s checksum. Uniloc therefore requests that the obviousness rejection of claims 2, 12 and 1 7 be reconsidered and withdrawn.
(Reply to Office Action, filed Mar. 18, 2011, p. 34).



The basis for this determination was that the Requester attempted to rely on Grundy‟s checksums; and, according to the Office, Grundy‟s
“[c]hecksums are not unique fields, even if there [sic] are at least in part derived from unique data.” (Order, p. 9.)
Yet despite this technically correct analysis of Grundy‟s checksums …
(Reply to Office Action, filed Mar. 18, 2011, p. 43).



Further, the checksums described in Grundy are not cryptographic functions, but rather appear to be used to check for typographical data
entry errors or transmission errors.
(Declaration of Dr. Udo W. Pooch Under 37 C.F.R. § 1.132, ¶ 32).



While the usual checksums are useful in detecting accidental modification such as corruption to stored data or errors in a communication
channel, they provide no security against a malicious agent as their simple mathematical structure makes them trivial to circumvent. To
provide this level of integrity, the use of a cryptographic hash function is necessary.
(Declaration of Dr. Udo W. Pooch Under 37 C.F.R. § 1.132, ¶ 33).



A checksum is a value that (a) is computed by a function that is dependent on the contents of a data object and (b) is stored or transmitted
together with the object, for the purpose of detecting changes in the data. A checksum algorithm is a signature algorithm that does not
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attempt to provide cryptographic protection against inversion. The term “checksum” originally referred to checking algorithms that summed
the bytes, but is now generally used to refer to any non-cryptographic checking algorithm.
(Declaration of Dr. Udo W. Pooch Under 37 C.F.R. § 1.132, ¶ 36).


This is consistent with a contemporaneous definition of “checksum” from the time the application leading to the „216 patent was filed, which
defines a “checksum” as:
a calculated value that is used to test data integrity. Errors can occur when data is transmitted or when it is written to disk. One means of
detecting such errors is use of a checksum, a value calculated for a given chunk of data by sequentially combining all the bytes of data with a
series of arithmetic or logical operations. After the data is transmitted or stored, a new checksum can be calculated (using the possibly faulty
transmitted or stored data) and compared with the original one. If the checksums don‟t match, an error occurred, and the data should be
transmitted or stored again; if they do match, the transmission or storage was probably error-free. Checksums are a simple validation
mechanism, and they cannot be used to correct erroneous data.
(Declaration of Dr. Udo W. Pooch Under 37 C.F.R. § 1.132, ¶ 36 (citing Computer Dictionary, The Comprehensive Standard for Business,
School, Library, and Home, Microsoft Press (1991) (emphasis added)); see also Pooch Declaration at ¶¶ 37-38.



Declaration of William R. Rosenblatt Under 37 C.F.R. § 1.132, filed Nov. 29, 2010, ¶¶ 48-65. (See, for example, ¶ 51: “I concur with that
characterization of checksums. A checksum is not usable as a generator of unique IDs.” See also, for example, ¶ 63: “For the above
reasons, a checksum cannot possibly preserve whatever uniqueness the input data may possess. In particular, a POSA would not ascribe
any reasonable definition of „unique‟ to the output of a checksum routine.”)



The PTO relied on Uniloc‟s repeated and express disclaimers by stating (inter alia): The Patent Owner has persuasively argued that the
summation disclosed in Grundy is used in the context of merely verifying the correctness of information related to the user and is not being
used to generate an ID per se. Since the information is not being used for the same purpose, one skilled in the art therefore would not use the
algorithm of Grundy as part of the generation of the claimed licensee unique ID.” (Notice of Intent to Issue Ex Parte Reexamination
Certificate, at p. 6.)



Defendants may rely on other statements made by Uniloc during the reexamination, as well other specific statements made by the declarants
in the declarations submitted by Uniloc during the reexamination. In addition, Defendants note that Uniloc has just produced, on August 29,
2011, the lengthy declaration of William Rosenblatt. While Defendants have cited to certain portions of that declaration, above, Defendants
reserve the right to rely on other portions of that declaration, which appears to include extensive support for the disclaimer.
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ATTACHMENT 2 TO EXHIBIT B
(Evidentiary Support For Prosecution History Disclaimer)
Intrinsic Evidence in support of the following disclaimer from the reexamination file history: The licensee unique ID generated by the means
recited in each of the claims must be derived from at least one piece of information that is specific to the user, such as name, billing information,
or product information unique to the installation entered by the user. The information cannot be specific to the computer or independently
generated by the computer.3
Ex Parte Reexamination Interview Summary, mailed on Nov. 19, 2010, slide 22:

Id. at slide 26:

3

By arguing that there has been a disclaimer based on the reexamination file history, the Defendants maintain, and do not waive, the additional argument that, independent of the
disclaimer, the claims as previously construed do not cover the disclaimed subject matter.

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Id. at slides 32-35:

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Office Action Response filed Nov. 29, 2010, at 17-18, 20-25, 29, 31, and 33-35.
See, e.g., id. at 17:

See e.g., id. at 18:

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See, e.g., id. at 20:

See, e.g., id. at 21:

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See, e.g., id. at 22-23:

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See, e.g., id. at 24:

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See, e.g., id. at 25:

See Office Action Response filed Mar. 18, 2011 at 11, 12, 14-15, 19-22, and 31-32.
See, e.g., id. at 11:

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See, e.g., id. at 12:

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See, e.g., id. at 14-15:

See, e.g., id. at 19-22:

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See Declaration of William R. Rosenblatt Under 37 C.F.R. § 1.132, filed Nov. 29, 2010, ¶¶ 16-21, 23, 36-47, 66-68, 72-74, 80-83.
See, e.g., id. at ¶¶ 38-40:

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See Notice of Intent to Issue Reexamination Certificate, mailed on Aug. 5, 2011 at 5:

Defendants may rely on other statements made by Uniloc during the reexamination, as well other specific statements made by the declarants in the
declarations submitted by Uniloc during the reexamination. In addition, Defendants note that Uniloc has just produced, on August 29, 2011, the
lengthy declaration of William Rosenblatt. While Defendants have cited to certain portions of that declaration, above, Defendants reserve the right to
rely on other portions of that declaration, which appears to include extensive support for the disclaimer.
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