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

Filing 249

MOTION for Leave to Address File History Disclaimer Issues, Arising From the Recent Reexamination, in the Upcoming Claim Construction Proceeings by Adobe Systems Inc., Alladin Knowledge Systems Ltd., Alladin Knowledge Systems, Inc., FileMaker, Inc., NATIONAL INSTRUMENTS CORP., Onyx Graphics, Inc., Pervasive Software, Inc., Pinnacle Systems, Inc., Safenet, Inc., Sonic Solutions, Symantec Corp.. (Attachments: # 1 Exhibit A - Claim Construction Letter, # 2 Text of Proposed Order, # 3 Text of Proposed Order Alternate Order)(Gardner, Allen)

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

DEFENDANTS’ MOTION FOR LEAVE TO ADDRESS FILE HISTORY
DISCLAIMER ISSUES, ARISING FROM THE RECENT REEXAMINATION, IN
THE UPCOMING CLAIM CONSTRUCTION PROCEEDINGS

In an abundance of caution, Defendants hereby move for leave to address, in the
upcoming claim construction briefing, whether Uniloc is bound by express disclaimers
arising from the recent reexamination of the ’216 patent. Defendants presently intend to
fully address such issues in connection with the claim construction proceedings.
The moving defendants do not seek to change any prior construction – rather,
they seek to subject all relevant prior constructions to Uniloc’s express (and very recent)
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disclaimers. While leave does not appear to be required under these circumstances,
Uniloc seems to be taking the position that the Court has foreclosed any inquiry into
Uniloc’s express disclaimers absent such leave. Hence this motion.
As this Court may be aware, in recent reexamination proceedings that did not
conclude until earlier this month, the Patent and Trademark Office (“PTO”) twice
rejected all of the claims of the ’216 patent as invalid in light of two prior art references –
one to Hellman and one to Grundy. In order to overcome those rejections and distinguish
those references, Uniloc made a series of statements to the PTO as to what its patent
categorically does not cover. Some of those statements are collected in the attachments
to Exhibit B of the Joint Claim Construction Statement, setting out the intrinsic evidence
supporting Defendants’ claim construction positions. (See, e.g., Case No. 6:10-CV-472,
Dkt. No. 247-2.) They include, as just a small example, the following statements, all
made in or around late 2010 by Uniloc and/or its declarants to the PTO:
(1) “A checksum is not usable as a generator of unique IDs.”
(2) “Grundy himself suggests the use of checksums as error-checking means . . .”
(3) “. . . many different sets of user data could produce the same checksum.”
(4) “For the above reasons, a checksum cannot possibly preserve whatever
uniqueness the input data may possess.”
(5) “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 the intended registered user.”
(6) A checksum is “a calculated value that is used to test data integrity.”

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(Id.) This is just a sampling of the express and unambiguous statements made by Uniloc
to overcome the prior art. And Uniloc was successful. As the PTO noted in its August 5,
2011, Notice of Intent to Issue Reexamination Certificate: “The Patent Owner has
persuasively argued that the summation [algorithm] 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.” As a result, Defendants seek the
following disclaimer applicable to all asserted claims: “the licensee unique ID/security
key cannot be generated by a checksum, summation algorithm, or equivalent thereof,
used to test data integrity.” (See, e.g., Case No. 6:10-CV-472, Dkt. No. 247-2 at pp. 16,
17-21.)1
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Defendants Aspyr Media, Inc., Borland Software Cop, Digital River, Inc., GEAR
Software, Inc. and GEAR Software Holdings, Inc. also seek an additional disclaimer
applicable to all relevant claims based on Uniloc’s express and unambiguous disavowals
of claim scope in the same Reexamination filings addressed above. Uniloc’s disclaimers
relevant to the Hellman reference include for example the following: (1) “None of the
input signals to Hellman’s cryptographic function generator 38 (or 23)—namely, K (or
SK), N, R, and H—are unique to a licensee and therefore cannot disclose the ‘local
licensee unique ID’ of claim 1;” and (2) “Inputs to cryptographic function generator 38
are limited to K (the cipher key), N (the number of desired software uses), R (a random
number), and H (signal representing the software to be licensed). . . . There is no input
into Hellman’s cryptographic function that is uniquely associated with an intended
licensee. (Rosenblatt, ¶¶ 38-39).” See Case No. 6:10-CV-472, Dkt. No. 247-2 at pp. 16,
22-38. Similarly, this is just a sampling of the express and unambiguous statements made
by Uniloc to overcome the Hellman prior art reference. Defendants therefore seek the
following disclaimer as set forth by the PTO: “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.” Id.; Notice of
Intent to Issue Reexamination Certificate, mailed on Aug. 5, 2011 at 5.
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Uniloc knows that the issue of whether, and the extent to which, its recent
statements to the PTO, made to overcome the prior art, constitute binding disclaimers has
not been addressed by any Court. Indeed, when Defendants asked Uniloc not to oppose
this motion, and instead to allow Defendants to file a simple unopposed motion so that
this Court could address the issues in the first instance, Uniloc provided a “conditional”
agreement. Uniloc, according to its letter, would agree not to oppose such a motion, but
only if Defendants agreed to prevent any defendant from even asking this Court for leave
to seek to re-construe a few other terms of interest to those defendants:
“As for the alleged ‘prosecution history disclaimer applicable to
all claims,’ however, Uniloc will not oppose a motion seeking leave to
have the Court consider this single issue during the Markman process,
provided that no defendant seeks to re-construe any terms that have
already been construed. . .”
See Uniloc letter of August 26, 2011, attached hereto as Ex. A. In other words, Uniloc,
despite essentially acknowledging in this sentence that the disclaimer issue is not a
request to re-construe claim terms, took the position that if any Defendant sought to
exercise its right to ask for leave to reconsider the prior construction of any claim term,
Uniloc would oppose leave to allow this Court even to address a fundamental issue that
only recently arose in connection with Uniloc’s repeated and unambiguous assertions to
the PTO as to what its claims do not cover.
Defendants do not believe that Uniloc’s opposition to this motion is reasonable.
Disagreement with the Defendants’ arguments as to the existence of, or the scope and
effect of, disclaimers made by Uniloc in connection with the recent reexamination is one
thing. That is what the Markman briefing and proceedings are for. But taking the
position that the Court should not address the issue at all – or rather, that the Court should
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not address the issue unless Defendants give up some other, unrelated rights – is contrary
to all notions of justice and fair play and is, in addition, just inviting the Court into error.
Uniloc may contend that Defendants should have moved for leave earlier.
Defendants disagree, for at least three reasons. First, even if one were to assume that
leave is required here, it would not have been proper to raise the disclaimer issue any
earlier with the Court. As noted above, the claims in the ’216 patent stood rejected until
August 5, 2011 – when the PTO issued its Notice of Intent to Issue Reexamination
Certificate (“NIRC”). Uniloc’s disclaimers during the reexamination proceedings are
what convinced the PTO to issue the NIRC, and they were expressly the basis for the
PTO’s decision. Uniloc did not file a notice of the NIRC with the Court until August 10,
2011. (See, e.g., Case No. 6:10-CV-472, Dkt. No. 207.) Uniloc then dropped six claims
on August 19, 2011. Defendants raised the disclaimer issue in the exchange of the
parties’ P.R. 4-2 disclosures on August 24, 2011. Defendants then met and conferred
with Uniloc on August 25, before formally requesting leave, since the Court generally
requires that parties meet and confer before filing motions (L.R. CV-7), and Defendants
did not expect that Uniloc would oppose addressing the disclaimer issues (and indeed
Uniloc did not indicate any opposition until it sent its letter of August 26 which, as set
forth above, for the first time attached unacceptable and punitive conditions to any nonopposition).2 Thus, in reality, this motion (if it is even required) is timely.

2

It is also noteworthy that some of the most direct and unambiguous statements
made by Uniloc to the PTO to overcome the prior art were included in a declaration of
William Rosenblatt, dated late November 2010 and submitted by Uniloc to the PTO.
Defendants were unable to obtain a copy of that declaration from the PTO, and Uniloc
did not produce it to the Defendants in connection with its requisite prior production.
Indeed, Uniloc did not produce a copy of the Rosenblatt Declaration until yesterday –
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In any event, this is not a request to re-construe anything. Instead, it is a request
to subject all prior constructions to disclaimers that apply across the board (but not to any
one specific term) – and that are based on admissions Uniloc made recently to the PTO to
overcome rejections, long after the claim constructions from the prior cases issued. Thus,
it is unclear whether the Court’s Docket Control Order (DCO) even requires a motion for
leave.
Finally, even if the DCO were construed to require a motion for leave, the DCO is
silent as to the timing of such a motion, and Defendants raised the issue in a timely
fashion (in their P.R. 4-2 disclosures) and are now timely seeking leave.3 That Uniloc
cannot seriously argue waiver here is reflected in Uniloc’s letter offering not to oppose;
but the fact that Defendants would not agree to draconian conditions cannot lead to a
waiver of rights arising out of Uniloc’s recent conduct in front of the PTO.
For all of the foregoing reasons, Defendants respectfully request that the Court
grant them leave to have the disclaimer issues addressed during the upcoming claim
construction proceedings, or alternatively to clarify that no such leave is required.

August 29, 2011; and yet it seeks to prevent Defendants from even addressing before this
Court the disclaimer issues arising therefrom.
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Defendants also note that a request for leave is included in the Patent Rule 4-3
Joint Claim Construction and Pre-Hearing Statement, filed by the parties on August 29,
2011.
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Dated: August 30, 2011

Respectfully submitted,
/s/ Mark A. Flagel, with permission by
Allen F. Gardner
Michael E. Jones
State Bar No. 10929400
Allen F. Gardner
State Bar No. 24043679
POTTER MINTON
A Professional Corporation
110 N. College, Suite 500 (75702)
Tyler, Texas 75702
[phone]
[phone] (Facsimile)
[e-mail]
[e-mail]
LATHAM & WATKINS LLP
Mark A. Flagel
Yury Kapgan
Dale Chang
355 S. Grand Avenue
Los Angeles, CA 90071-1560
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
LATHAM & WATKINS LLP
Dean G. Dunlavey
650 Town Center Drive, 20th Floor
Costa Mesa, CA 92626-1925
Tel: [phone]
Fax: [phone]
[e-mail]
ATTORNEYS FOR SYMANTEC
CORPORATION AND XTREAMLOK,
PTY
By: /s/ Steven R. Katz, with permission by
Allen F. Gardner
David J. Healey
FISH & RICHARSON P.C.
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1221 McKinney Street - Suite 2800
Houston, TX 77010
Phone: [phone]
Fax: [phone]
[e-mail]
Frank E. Scherkenbach
Kurt L. Glitzenstein
Steven R. Katz
FISH & RICHARDSON P.C.
One Marina Park Drive
Boston, MA 02210
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Defendants
NATIONAL INSTRUMENTS,
ADOBE SYSTEMS INCORPORATED,
SAFENET, INC., ALADDIN
KNOWLEDGE
SYSTEMS, INC., ALADDIN
KNOWLEDGE
SYSTEMS LTD, PINNACLE SYSTEMS,
INC., ONYX GRAPHICS, INC.
By: /s/ Charles D. Huston, with permission
by Allen F. Gardner
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.
By: /s/ Melissa Richards Smith, with
permission by Allen F. Gardner
Melissa Richards Smith
TX Bar No. 24001351
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GILLAM & SMITH, L.L.P.
303 South Washington Avenue
Marshall, Texas 75670
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
MORRISON & FOERSTER LLP
Michael A. Jacobs (CA Bar No. 111664)
425 Market Street
San Francisco, California 94105
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
MORRISON & FOERSTER LLP
Rudy Y. Kim (CA Bar No. 199426)
Christopher F. Jeu (TX Bar No. 24050823)
755 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
E-mail: [e-mail]
Attorneys for Defendant FILEMAKER,
INC
By: /s/ Marc Tarlock, with permission by
Allen F. Gardner
Roderick M. Thompson
(admitted pro hac vice)
(CA Bar No. 145954)
Andrew Leibnitz (admitted pro hac vice)
(CA Bar No. 184723)
Marc Tarlock (admitted pro hac vice)
(CA Bar No. 257712)
Christina R. Hollander
(admitted pro hac vice)
(CA Bar No. 267292)
FARELLA BRAUN & MARTEL LLP
235 Montgomery Street, 17th Floor
San Francisco, CA 94104
Telephone: [phone]
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Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Otis W. Carroll
(State Bar No. 03895700)
Deborah Johnson Race
(State Bar No. 16448700)
IRELAND, CARROLL & KELLEY, P.C.
6101 South Broadway, Suite 500
Tyler, TX 75703
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Email: [e-mail]
ATTORNEYS FOR DEFENDANT AND
COUNTERCLAIMANT SONIC
SOLUTIONS LLC
CERTIFICATE OF SERVICE
The undersigned hereby certifies that 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 per Local Rule CV-5(a)(3) on August 30, 2011.

/s/ Allen F. Gardner

CERTIFICATE OF CONFERENCE
I hereby certify that counsel for the undersigned Defendants met and conferred
with counsel for the Uniloc plaintiffs on a telephone conference August 25, 2011 and
counsel for Uniloc, in a letter dated August 26, 2011, stated they were conditionally
opposed to the relief sought in this motion.
/s/ Mark A. Flagel, with permission
by Allen F. Gardner

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