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)

Exhibit A

voice 817.377.9111 
fax [phone] 
www.nbclaw.net 

Barry Bumgardner 
direct 817.377.3494 
[e-mail] 

August 26, 2011
VIA E-MAIL
Counsel of Record
Re:

Uniloc USA, Inc., et al. v. Sony Corporation of America, et al.
Civil Action No. 6:10-cv-00373;
Uniloc USA, Inc., et al. v. National Instruments, Corp., et al.
Civil Action No. 6:10-cv-00472;
Uniloc USA, Inc., et al. v. BMC Software, Inc., et al.
Civil Action No. 6:10-cv-00636; and
Symantec Corporation, et al. v. Uniloc USA, Inc., et al.
Civil Action No. 6:11-cv-00033

Dear Counsel:
Based on the meet and confer conducted on August 25, 2011, it is Uniloc’s understanding
that Defendants wish to submit the following phrases to the Court for construction:
1
2
3
4
5
6

Licensee unique ID/Security key/Enabling key/Registration key
Permits use of said digital data...only if...has matched . . .
Switching said software into fully executed mode only if...has matched...
Local (in the phrase “local licensee unique ID generating means”)
Comprises part of said digital data when executed on said platform
Alleged Prosecution History Disclaimer Applicable To All Claims

As you are aware, the Court’s Docket Control Order states that before submitting previously
construed terms a party “must seek leave and show good cause to submit previously construed
terms for construction.”
The phrases (1) “Licensee unique ID/Security key/Enabling
key/Registration key” and (2) “Local (in the phrase ‘local licensee unique ID generating means’)”
have been previously construed. See Uniloc USA, Inc. v. Microsoft Corp., 447 F. Supp. 2d 177
(D.R.I. 2006) (construing Licensee unique ID/Security key/Enabling key/Registration key to mean
“A unique identifier associated with a licensee” and construing “Local licensee unique ID
generating means to mean “Function: to generate a local or remote licensee unique ID/registration
key. Structure: a summation algorithm or a summer and equivalents thereof.”). Defendants have
not sought leave or been granted permission by the Court to submit and re-construe these phrases.

August 26, 2011
Page 2
Thus, Uniloc contends that Defendants’ inclusion of these phrases in the P.R. 4-3 Joint Statement,
especially this late in the claim construction process, is improper. Accordingly, since Defendants
(1) have not sought leave or been granted leave, and (2) have not provided Uniloc with any
evidence that could constitute “good cause” for changing the construction of these terms, Uniloc
will oppose any motion seeking leave to re-construe these terms.
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 no defendant seeks to re-construe any terms that have already been
construed (i.e., “Licensee unique ID/Security key/Enabling key/Registration key” and “Local (in the
phrase ‘local licensee unique ID generating means’)”. But, if any defendant seeks to re-construe a
previously construed phrase (including the ones mentioned above), Uniloc will set forth its position
regarding the “prosecution history disclaimer” issue in its response to Defendants’ motion seeking
leave.
As you are aware, the P.R. 4-3 Joint Statement is due on Monday. Please let us know by
12:00 p.m. (Central) on Monday whether any defendant will be submitting previously construed
terms, or dropping any terms, so that we can prepare our portion of the Joint Statement accordingly.
If Defendants wish to have another call on Monday morning to go over any last minute issues,
Uniloc is available.

Yours Truly,
/Barry Bumgardner/
Barry Bumgardner

3131 West 7th Street, Suite 300, Fort Worth, Texas 76107