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

Filing 250

FILED IN ERROR. PLEASE IGNORE. Atty filed corrected document at DE 251. PLEASE IGNORE. REPLY to Response to Motion re 243 Opposed MOTION for Leave to Construe Previously Construed Term filed by Uniloc Singapore Private Limited, Uniloc USA, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Text of Proposed Order)(Nelson, Edward) Modified on 9/1/2011 (leh, ).

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA, INC., et al.
Civ. Action No.: 6:10-cv-00472
Plaintiffs,
v.

JURY TRIAL DEMANDED

NATIONAL INSTRUMENTS CORP., et al.
Defendants.

UNILOC’S OPPOSITION TO PERVASIVE SOFTWARE, INC.’S
MOTION FOR LEAVE TO CONSTRUE PREVIOUSLY CONSTRUED TERM
Plaintiffs Uniloc USA, Inc. and Uniloc Singapore Limited (“Uniloc”) file this opposition
to Defendant Pervasive Software, Inc.‟s Motion for Leave to Construe Previously Construed
Term and would show the Court the following:
I.

PERVASIVE’S MOTION IS UNTIMELY
In its May 20, 2011 Memorandum Opinion and Order, the Court stated:
The Court notes that many claim terms have been previously
construed and appealed to the Federal Circuit. While the Court
understands the parties‟ need to preserve their rights for appeal, the
Court prefers to minimize the time spent on previously construed
terms. Accordingly, before the parties file a Joint Claim
Construction and Prehearing Statement, the parties shall meet and
confer regarding preserving the parties‟ arguments for appeal by
stipulation rather than resubmitting previously construed terms for
construction. The parties must seek leave and show good cause to
submit previously construed terms for construction.

(Dkt. No. 136, p. 7 (emphasis added)). The Court reaffirmed this mandate in its June 8, 2011
Docket Control Order:
The Court prefers to minimize the time spent on previously
construed terms. The parties shall meet and confer regarding
preserving the parties‟ arguments for appeal by stipulation rather
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than resubmitting previously construed terms for construction.
The parties must seek leave and show good cause to submit
previously construed terms for construction. The parties shall
coordinate to file one Joint Claim Construction and Prehearing
Statement applicable to all the Uniloc cases.
(Dkt. No. 150, p. 7).
The deadline for the parties to file their combined P.R. 4-3 Joint Claim Construction and
Prehearing Statement was August 29, 2011, and Uniloc‟s opening claim construction brief is due
on September 12, 2011. Uniloc‟s understanding of the Court‟s Orders is that if Pervasive wished
to submit previously construed terms, it needed to have sought leave from the Court weeks ago
in order to provide the Court an opportunity to consider the request and rule prior to the filing of
the P.R. 4-3 Joint Statement. Pervasive failed to do so. Now, instead of preparing its opening
claim construction brief, Uniloc is forced to engage in unnecessary motion practice because of
Pervasive‟s failure to timely comply with this Court‟s orders. Furthermore, Pervasive‟s belated
motion now forces Uniloc to guess at what issues will be relevant in drafting its opening brief on
claim construction.
II.

THERE IS NO NEW PRIOR ART FOR THE COURT TO CONSIDER
The term “licensee unique ID” was previously construed by the District of Rhode Island

to mean “a unique identifier associated with a licensee.” See Uniloc USA, Inc. v. Microsoft
Corp., 447 F. Supp. 2d 177, 183-189 (D.R.I. 2006).

The Federal Circuit affirmed the

construction on appeal. See Uniloc USA, Inc. v. Microsoft Corp., 290 Fed. Appx. 337, 344 (Fed.
Cir. 2008) (“The district court correctly construed the „licensee unique ID‟ as a unique identifier
associated with a licensee that can be, but is not limited to, personally identifiable information
about the licensee or user.”).

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Pervasive argues that this Court should “clarify” the previous construction in light of
certain prior art references, particularly United States Patent No. 4,796,220 to Wolfe.1 To this
end, Pervasive claims “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 omits from its motion, however, that the Federal Circuit specifically considered Wolfe
in connection with the proper meaning of “licensee unique ID,” addressing Wolfe and what
constitutes “solely platform information” as follows:
Microsoft is, however, correct that the licensee unique ID cannot
be based solely on platform-related user information. The
specification distinguishes the disclosed invention from U.S.
Patent No. 4,796,220 (the „220 patent) stating: „U.S. Pat. No.
4,796,220 [Wolfe] does not contemplate or disclose utilization of
information which is unique to the user or intended licensee as part
of the registration process which is to be distinguished from
identification of the platform upon which the software is proposed
to be run.” „216 patent col.1 ll.60-65.
Uniloc, 290 Fed. Appx. at 343 (emphasis added).
In essence, Pervasive is not satisfied with the prior outcome and is simply asking this
Court to reconsider. Such does not meet the Court‟s good cause threshold for re-submitting
previously-construed terms, and the Court should decline Pervasive‟s request.
III.

PERVASIVE’S PROPOSED “CLARIFICATION”
FEDERAL CIRCUIT PRECEDENT

CONFLICTS

WITH

Pervasive wishes to alter the prior construction to include a “clarification” that the unique
identifier associated with a user “cannot be based solely on platform-related user information,
including software serial number or hardware configuration or both.” In approving the district
court‟s construction, the Federal Circuit stated:

Wolfe appears on the face of the „216 Patent and is discussed in the Patent‟s background section of the
„216 Patent. (Exh. A at cover page, Col. 1:57-65 (United States Patent No. 5,490,216)).
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The district court correctly construed the “licensee unique ID” as a
unique identifier associated with a licensee that can be, but is not
limited to, personally identifiable information about the licensee or
user. This definition of the non-platform-related unique user
information needed to generate the licensee unique ID could
encompass vendor-supplied information.
Uniloc, 290 Fed. Appx. at 344 (emphasis added). The Federal Circuit continued:
We are unconvinced by Microsoft‟s argument that, during
prosecution, Uniloc clearly and unmistakably disavowed the use of
vendor-provided information, such as the Product Key, to generate
the licensee unique ID. We agree with the district court that the
single sentence, when read in context, does not preclude the
vendor-provided inputs for the generation of licensee unique IDs.
Id. at n. 5 (emphasis added).
Thus, the Federal Circuit has indicated that vendor-supplied information such as a
Product Key (much like a software serial number) is non-platform-related unique user
information, not platform-related user information as Pervasive‟s construction suggests.
IV.

THE ROSENBLATT DECLARATION ARGUMENT IS A RED HERRING
Pervasive insinuates that the Court should grant leave based on paragraphs 15-28 of the

November 23, 2010 Rosenblatt declaration.

As a preliminary matter, the declaration was

submitted in connection with the recently-concluded reexamination in which the Patent Office
confirmed all claims of the „216 Patent, and the Patent Office did not rely on it:

(Exh. B at p. 5 (Office Action mailed January 18, 2011)).

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Further, a review of the Rosenblatt declaration demonstrates that Mr. Rosenblatt believes
the term “licensee unique ID” requires “a unique identifier that is somehow associated with a
licensee.” (Exh. C at ¶23 (Rosenblatt Declaration dated Nov. 23, 2010)). This is, essentially, the
same construction accorded the term by the district court and the Federal Circuit. Thus, the
declaration presents nothing new for this Court to consider.
V.

CONCLUSION
For the reasons stated above, Uniloc respectfully requests that the Court reject

Pervasive‟s belated motion to alter the previous construction of the term “licensee unique ID.”
Furthermore, Uniloc requests an expedited decision from the Court so that Uniloc can conform
its opening claim construction brief to the Court‟s expectations.

Dated: August 31, 2011

Respectfully Submitted:
/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]
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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

CERTIFICATE OF SERVICE
I hereby certify that on the 31st 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
Edward R. Nelson, III

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