Uniloc USA, Inc. et al v. NATIONAL INSTRUMENTS CORP. et al
Filing
251
RESPONSE in Opposition 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)
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re reexam of: U.S. Patent 5,490,216 to
Confirmation No.: 2214
RICHARDSON,
Art Unit: 3992
III
Reexam Control No.: 9010lD,831
Examiner:
Filed: January 22, 20lD
Atty. Docket: 2914.001REXO
HENEGHAN, Matthew E.
For: System for Software Registration
Declaration of William R. Rosenblatt Under 37 C.F.R. § 1.132
Mail Stop Ex Parte Reexam
Commissioner for Patents
PO Box 1450
Alexandria, VA 22313-1450
Sir:
I, William R. Rosenblatt, declare as follows:
Retention:
1.
I have been retained as a technical expert witness on behalf of Uniloc
USA, Inc. and Uniloc Singapore Private Limited (collectively "Uniloc" herein) for the
above-captioned
Patent
reexamination.
No. 5,490,216
("the
I understand
'216
patent")
that this reexamination
which
resulted
involves U.S.
from Application
No.
081124,718, filed on September 21, 1993 on behalf of Frederic B. Richardson, III.
I
further understand that the '216 patent is currently assigned to Uniloc Singapore Private
Limited.
Introduction:
2.
Over the past seven years I have been retained as a technical expert
witness in nine cases and have testified in that capacity in Federal Court.
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3.
I have reviewed
RICHARDSON, ill
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
and am familiar
with the Office action dated
September 28,2010 issued by the U.S. Patent and Trademark Office ("USPTO") for the
'216 patent ("the '216 Office action").
are subject to reexamination.
I understand that claims 1-20 of the '216 patent
Claims 1, 12, 17, 19 and 20 are independent
claims.
Claims 2-11 depend, directly or indirectly, from claim 1; claims 13-16 depend, directly
or indirectly, from claim 12; and claim 18 depends from claim 17.
4.
I have reviewed and am familiar with U.S. Patent No. 4,658,093 to
Martin E. Hellman (hereinafter
"Hellman")
and with U.S. Patent No. 5,291,598
to
Gregory Grundy (hereinafter "Grundy"), in combination, as used in the rejection under
35 U.S.c. § 103(a).
5.
I am familiar with the level of ordinary skill in the art relevant to the
'216 patent as of the September 21, 1993 filing date of that patent.
In my opinion a
person of ordinary skill in the art at the time of the invention (hereinafter
would have held a Bachelor of Science degree in Computer
"POSA")
Science or Electrical
Engineering with an emphasis on computer systems, in addition to one to two years of
programming experience.
6.
I have been asked to consider the Hellman and Grundy references in
view of the claims under reexamination
in the '216 patent.
Specifically, I have been
asked to determine facts that would be relevant to the legal conclusion of whether a
POSA would have found of the claims under reexamination to be obvious over Hellman
in view of Grundy.
7.
work
I am being compensated at my standard hourly rate of $450.00 for my
on this declaration
and my participation
in the oral interview
with
the
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reexamination panel on November 17, 2010. My compensation is not dependent on the
outcome of this reexamination
and in no way affects the substance of my statements
during the oral interview or in this declaration.
Qualifications
8.
I have more than 27 years of professional experience and familiarity
with the art of computer and software architecture and design. I have had over 15 years
of particular experience in the field of digital rights management (DRM) and antipiracy
technology.
I am the lead author of the book Digital Rights Management: Business and
Technology (Wiley, 2001) and several other book chapters, white papers, and articles on
related subject matter.
I have also chaired conferences
since 2004 and spoken at
conferences since 1999 on related subject matter worldwide.
9.
I earned
a Bachelor
of Science
in Electrical
Engineering
and
Computer Science cum laude from Princeton University in 1983 and a Master of Science
degree in Computer and Information Science from the University of Massachusetts
at
Amherst in 1990. I did research and completed coursework towards a PhD in Computer
and Information
Science from the same university;
my field of research
was the
intersection of software engineering, databases, and object-oriented systems. I have had
business education from New York University, Harvard University, and the University
of Southern California.
10.
My work experience
includes
periods
as a software engineer
at
Motorola, Intermetrics (now Titan Corp.), and The Rustin Group, as well as Information
Technology
management
and Research and Development
Service, Times Mirror Co., the McGraw-Hill
roles at Moody's
Companies,
Investors
and Fathom Knowledge
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Network (an Internet e-leaming startup at Columbia University).
I have managed the
consulting firm GiantSteps Media Technology Strategies since June 2000. GiantSteps'
clients have included several vendors of DRM, antipiracy, and related technologies.
I
have also performed patent infringement and valuation analysis for several patent holders
and potential patent acquirers.
My Understanding of Obviousness:
11.
It is my understanding that a claimed invention is unpatentable if the
differences between the invention and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which the subject matter pertains.
12.
It is my understanding that "obviousness"
is a question of law based
on underlying factual issues including the content of the prior art and the level of skill in
the art. I understand that for a single reference or a combination of references to render
the claimed invention obvious, a person of ordinary skill in the art must have been able
to arrive at the claims by altering or combining the applied references in an obvious
manner.
13.
I also understand that when considering the obviousness of a patent
claim, one should consider whether a teaching, suggestion or motivation to combine the
references exists so as to avoid impermissibly applying hindsight when considering the
prior art. I understand this test should not be rigidly applied, but that the test can be
important to avoiding such hindsight.
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In addition, it is my understanding that one must consider whether or
not there is objective evidence of non-obviousness,
which is also referred to as the
"secondary considerations of non-obviousness."
Claim Construction:
15.
I understand that claim construction is a matter of law. But to understand
the invention, I necessarily have to arrive at my own conclusions as to certain terms that
appear in the '216 patent claims. I understand that claim terms are to be read in view of
the patent specification.
If a term is not explicitly defined there, the default definition of
the term is that which a POSA would use or infer from context. If the term in question is
not a term of art, then I would naturally use the ordinary English definition of the term.
"Licensee unique ID," "Security Key," ''Registration Key," and ''Enabling Key":
16.
In my view, these terms refer to the same thing. The '216 patent at 13:4-
10, describing an embodiment of the invention, discloses:
Remote summer 89 combines these signals by addition
(thereby acting as a remote licensee unique ill generating
means) so as to provide a summed output, here termed X,
which represents a licensee unique ID or enabling key
which should match identically with the local licensee
unique ill or registration key or registration number Y if
inputs S, C and P to summers 85 and 89 are identical.
('216 patent at 13:4-10, emphasis added)
17.
From this language
the "licensee
unique
ill,"
"enabling
key," and
"registration key" are the same, because they are either synonymous or of equal value.
In addition,
this
language
defines
"registration
number"
as the
same
as the
aforementioned terms.
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18.
RICHARDSON, III
Reexam of Pat. No. 5,490,216
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As for "security key," it is defined in the patent specification with the
language "registration number or security key" several times, e.g., '216 patent at 7:2930. I therefore understand all of the terms to have the same meaning.
19.
The term "licensee unique ID" is the most common of these terms in the
specification and I will focus on it for that reason.
20.
The patent specification indicates that the unique ID is associated with
information about the user:
The registration dialogue box C ... prompts the user for
details unique to that user (including, for example, name,
company, address, state, contact number) together with
financial details for payment for the purpose of becoming a
registered user of the software protected by the registration
routine ... This information, unique to the user, is passed
through a registration algorithm ... which generates a
registration number or security from the information unique
to the user together with the serial number previously
generated. ('216 patent at 7:8-19, parenthetical statements
and figure references omitted)
21.
I understand "user" and "licensee"
entity intending to take the license to the software.
to be synonymous:
the user is the
The specification does not disclose
the registration algorithm in sufficient detail to determine whether or not the unique ID
can be said to be "derived from" the user information; therefore it suffices to say that the
unique ID is "associated with" the user information.
22.
information
"Derived from" suggests a calculation or algorithm that takes the user
as input.
The invention leaves open possibilities
for other methods of
generating unique IDs from user information -- table lookups, for example.
Therefore a
looser relationship between the user information and the ID is warranted, and the unique
ID is "associated with" the licensee.
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23.
RICHARDSON, III
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Each of the above terms therefore requires a unique identifier that is
somehow associated with a licensee.
"Registration system":
24.
This term is explained
in two places in the '216 patent.
First, the
specification states that "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."
('216 patent, Abstract).
25.
Second, one of the disclosed embodiments states that " ... the registration
system is implemented
such that the digital data and, more particularly,
the use code
portion of that digital data can be executed on the platform in a use mode only if the
registration
procedure
to which reference
embodiments has been performed."
26.
has been made in respect
of previous
('216 patent at 11:8-13, figure citations omitted)
The "registration procedure" in the above is defined in the disclosure of
the first embodiment ('216 patent at 8: 12-13) as the procedure described in Figure 2b.
27.
The term "registration
embodiments
system" is used in disclosures
of subsequent
with reference to the definition in the first embodiment; see for example
'216 patent at 10:42-44 (fifth embodiment: "This registration procedure is as previously
described
with reference
to the first embodiment.")
and 11:8-13 as above (sixth
embodiment).
28.
For these reasons, the definition of "registration system" provided in the
Abstract is consistent with its use in the remainder of the specification-namely,
"A
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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."
"Wherein said registration system is replicated at the registration authority":
29.
This phrase is an element of claim 12 of the '216 patent.
The
"registration authority" is the remote system on which the remote licensee unique ID
generating means is located.
30.
Otherwise,
the
word
"replicated"
appears
only
once
in
the
specification, in language that is substantially the same as that recited in claim 12. ('216
patent at 4: 13-17, the only difference being "means" in the latter instead of "system" in
claim 12).
31.
"Replicate" or "replicated" is a term of art in the software field, but in
a subfield that is irrelevant to the subject matter of the '216 patent.
It refers to a
technique
database
for duplicating
data stored
in a database
onto another
synchronizing updates to the data so that they are kept current in both databases.
and
This
has nothing to do with the procedures referred to in the '216 patent.
32.
Turning
Merriam-Webster
to the English
Third New International
dictionary
Dictionary
definition
of "replicated":
defines "replicate"
the
(verb) as
"duplicate, repeat'."
33.
Therefore I understand "replication" of a registration system in claim
12 to refer to duplication of the registration system at the registration authority.
1 Merriam-Webster
Third New International
Massachusetts: Merriam-Webster, 1986.
Dictionary, p. 1925.
Springfield,
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Analysis of Claim lOver Hellman in View of Grundy:
34.
Claim 1 of the '216 patent stands rejected on grounds of obviousness
over Hellman in view of Grundy. Claim 1 recites local and remote "licensee unique ID"
generation by the same algorithm on both local and remote systems.
35.
The Office action asserts that "Hellman discloses several algorithms
for local licensee unique ID and remote licensee unique ID generation" and then relies on
Grundy to supply an algorithm for unique ID generation,
noting that "it would be
obvious to one of ordinary skill in the art at the time the invention was made to modify
Hellman to use Grundy's checksum for ID generation, because it is easier to implement"
than the summer disclosed in the '216 patent. ('216 Office action, p. 7).
Neither Hellman Nor Grundy Teach a Local or Remote Licensee Unique ID
36.
To form an opinion on the above assertion in the Office action, first I
consider whether either Hellman or Grundy teaches the generation of "licensee unique
ID" (hereinafter "LUID") in any form. My opinion is that they do not. In support of the
rejection, the '216 Office action cites to Hellman at l O:14-18, which refers to the "base
unit" in Hellman's Figure 7, and equates that to the "local platform" in the '216 patent.
The Examiner also cites to Hellman at 6:62-7:2, which refers to the "authorization
and
billing unit" in Hellman's Figure 2, and equates that to the "remote platform" in the '216
patent.
37.
My showing that Hellman in combination with Grundy does not teach
LUID generation follows three steps: First, I show that Hellman does not teach "licensee
ID generation."
Second, I show that Hellman does not teach "unique ID generation" (at
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either local or remote locations).
deficiencies
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Third, I show that Grundy does not cure the
of Hellman such that the resulting combination
teaches local or remote
LUIDs.
First, regarding Hellman and "licensee ID generation": the process in
38.
Hellman cited by the examiner above shows that the "check value C" (Hellman at
10: 17), which the Examiner equates to LUID, is generated from four inputs, designated
as K, N, R, and H. Of these: K is a key to a cryptographic function, which is an indicium
of the computer on which the software is intended to be run. N is the number of usages
of the software requested by the user (see Hellman at 5:65-66); R is a random number
(Hellman at 5:66); H is an indicium of the software package being authorized for use
(Hellman at 6:31-35), which is computed by means of a hash function.
produces a value that serves as a mathematical
"shorthand"
A hash function
for some data that has
properties described appropriately in Hellman at 6:38-61, including that it is efficient to
calculate and store.
39.
None of these four inputs is an indicium of the licensee of the
software, i.e., the user intending to run the software on the computer. Therefore Hellman
does not teach "licensee ID generation."
40.
conclusion.
I have reviewed Hellman's sworn testimony at trial. It reinforces my
The following is an excerpt from examination of Hellman at trial:
[Attorney] Question: If you wanted to indicate that
information associated with the user, unique information
was input into the cryptographic function, you certainly had
the ability to disclose that in the figures, if you so chose.
[Hellman] Answer: Correct.
[Attorney] Question: And you didn't?
[Hellman] Answer: Correct.
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[Attorney] Question: And you also had the ability to
describe in the patent, if you so chose?
[Hellman] Answer: In the specification? Yes.
[Attorney] Question: And you didn't?
[Hellman] Answer: Correct.
(March 31,2009 Trial Transcript: p. 61, 1117 - p. 62, 114,
Uniloc USA, Inc. et al. v. Microsoft Corp., C.A. No. 03440 (D.R.I.))
41.
Second, I show that Hellman does not teach "unique ID generation"
at either local or remote locations.
Three figures in Hellman depict the generation of the
ID that is to be checked for validity: Figures 2, 6, and 7 (shown below). Figure 2 shows
a Cryptographic
Function with inputs SK, N, R, and H that is used on the base unit
(equivalent to the local system in the '216 patent); its output is marked A and labeled 23.
Figure 6 shows a more complete
picture
of the base unit.
Figure 7 shows a
Cryptographic Function with inputs K, N, R, and H and output C, which is part of the
authorization and billing unit (equivalent to remote system in the '216 patent).
have outputs designated A and C respectively.
These
Because these are intended to be equal if
the software is authorized to run, I use the designation C hereinafter to refer to either of
the outputs. The Examiner equates C to the LUID in the '216 patent.
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N.H$
39
COMPARATOR
TO 36
SOFTWARE NAME"
A
42.
Hellman does not teach that C is unique.
(or A) as disclosed in the patent specification:
"Generator 23 has the property that new
authorizations cannot be inferred from old authorizations."
Figure 2.)
Here are descriptions of C
(Hellman at 7:3-4 describing
This property is not the same thing as "authorizations
Authorizations
must be unique."
need not be unique to satisfy this property, nor would a POSA infer
uniqueness from this property.
43.
For Figure 6, Hellman refers the reader to the ensuing description of
Figure 7 for a disclosure of the output of the Cryptographic Function: "In a manner to be
described shortly, the cryptographic check unit 34 determines if the authorization A is
valid for the software package 17 being presened to the base unit 12 for he current
authorization request." (Hellman at 9:54-57)
44.
the cryptographic
For Figure 7, Hellman discloses: "FIG. 7 depicts an implementation of
check unit 34.
Signals representing
K. N, Rand
H are applied as
inputs to a cryptographic function generator 38 which generates a check value C as an
output signal." (Hellman at 10: 14-18)
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45.
RICHARDSON, III
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These are the only disclosures in Hellman that describe any properties
of C. None of them teach that C must be unique, nor would they suggest such teaching
to aPOSA.
46.
Therefore Hellman does not teach "unique ID generation."
47.
Because Hellman teaches neither "licensee ID generation" or "unique
ID generation," Hellman does not teach local LUID generation, nor does Hellman teach
remote LUID, and thus cannot by itself satisfy the "licensee unique ID generating
means" element of claim 1 of the '216 patent.
Neither Hellman Nor Grundy Disclose or Teach Any Means for Generating
Unique
IDs:
48.
The Office action claims that the combination
Grundy teaches "local or remote licensee unique ID generation."
relies on Hellman to teach ID generation,
Grundy's
and introduces
checksum algorithm for generating unique IDs.
of Hellman
with
The Office action
Grundy in order to add
As I will show, Grundy's
checksum algorithm does not do this; therefore Grundy does not cure the acknowledged
deficiency in Hellman.
In short, neither Hellman nor Grundy disclose or teach any
"local or remote licensee unique ID generation."
49.
In support, I will now show that Grundy does not supply an adequate
algorithm for generating unique IDs.
The Examiner cites to Grundy, including "the
checksum originally calculated ... from the owner data as entered by the user during the
registration process" (See, Grundy 15: 11-13, figure citation omitted) and "a checksum of
the user data" (See, Grundy 18:25-26). ('216 Office action p. 7.)
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50.
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First, it is worth noting that the Order granting reexamination
of the
'216 patent characterizes checksums as non-unique: "Checksums are not unique fields,
even
if there
Granting/Denying
51.
[sicJ are at least
in part
definitions
from
unique
data."
(Order
Request for Ex Parte Reexamination, p. 9, emphasis added)
I concur with that characterization
usable as a generator of unique IDs.
specification
derived
of checksums.
A checksum is not
Grundy does not define "checksum"
in the
in the context of "a checksum of the user data," but rather suggests
elsewhere
in his specification
that are consistent
with both dictionary
definitions and a definition that a POSA would use, as I will now show.
52.
A POSA would understand "checksum" to mean a small number of
check digits that are typically appended to data in order to ensure the data's integrity
when it is copied, entered by a user, or transmitted.
To calculate a checksum of some
data, the data can be 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., C
bytes) and appended to the data before storage or transmission.
used in practice are variations on this scheme.
Checksum algorithms
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.
53.
The Grundy patent was filed in April 1992 and issued in March 1994.
Definitions of "checksum"
from dictionaries of computer terms from that era concur
with the POSA's definition that I have provided above.
54.
Reference,
For example: The Computer Glossary: The Complete Illustrated Desk
6th Edition, 1993 defines "checksum"
as a "Value used to ensure data is
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transmitted without error. It is created by adding the binary value of each alphanumeric
character in a block of data and sending it with the data. At the receiving end, a new
checksum is computed and matched against the transmitted checksum.
A non-match
indicates an error."
55.
As another example, the IBM Dictionary of Computing, 10th Edition,
1994 defines "checksum" as: "(I) The sum of a group of data associated with the group
and used for checking purposes.
(2) In error detection, a function of all bits in a block.
If the written and calculated sums do not agree, an error is indicated.
(3) On a diskette,
data written in a sector for error detection purposes; a calculated checksum that does not
match the checksum of data written in the sector indicates a bad sector.
either numeric or other character
strings regarded
The data are
as numeric for the purposes
of
calculating the checksum."
56.
In all of these cases, a checksum is 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.
57.
A few examples
highlight this point.
Most credit card numbers
contain check digits that serve to make sure that a credit card holder enters the number
properly (e.g., on a website).
The check digits are often calculated by means of an
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algorithm called the Luhn algorithm, which is a type of checksum algorithm.
Because it
is a single digit (with values 0-9), it is clearly impossible for the check digit to be unique,
given that most credit card numbers are 15 digits long (not counting the check digit) and
therefore that there are up to 1015 or 1 quadrillion possible credit card numbers.
58.
As another example, consider social security numbers, which are 9
digits long. Suppose we wanted to calculate the checksum of a social security number.
We can use the most basic checksum algorithm, in which all the digits in the input data
are added and the result is the checksum.
All checksum algorithms in practical use are
derived from this basic one. The social security numbers 123-45-6789 and 987-65-4321
are clearly different, but they both have the same checksum of 45; moreover, it is
impossible to reconstruct (preserve the uniqueness of) the original social security number
given the checksum.
59.
As a final example, electronic devices often have memory chips in
them that contain data stored at the factory. These are known as PROMs (Programmable
Read-Only Memory).
A typical PROM will contain a checksum of 8 bytes in length,
even though the capacity of the PROM may be in the thousands or millions of bytes, as
illustrated in the diagram below.
The data in the PROM can be added up byte by byte,
and the lowest 8 bytes of the result can be used as the checksum.
The checksum is used
to ensure that the data in the PROM was copied correctly during manufacturing.
It
works well for that purpose, because errors are typically limited to a few bytes, which
would result in a different checksum being calculated.
However, many different sets of
PROM data would lead to the same checksum, meaning that uniqueness of the data is not
preserved.
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Data
Checksum
~----------------~----------------~~
D
I
60.
Grundy himself suggests the use of checksums
as error-checking
means in disclosures of checksums in his invention other than the "checksum of the user
data" used to generate the code that the Office action alleges satisfies the LUID element
of claims in the '216 patent. Here are some examples:
•
"If there is a match, the anti-virus checksum as originally calculated during
the Franking process retrieved from the central database is compared with the
checksum
of the host software product
generating the registration code.
as calculated
in the process
of
If these two checksums do not match, it
indicates that the host software product has in some way been deliberately
or accidentally corrupted." (Grundy at 15:28-36, figure citations omitted,
emphasis added.)
•
"If the user data validity check passes, a checksum of the user data is created.
This checksum will be used during the Authorization
process as a cross-
reference to validate the user data as communicated
to the Manufacture
Control Agency." (Grundy at 18:26-29, figure citations omitted, emphasis
added.)
•
"A checksum is then calculated from the bits in the array and added to the
packed bit array.
This checksum will be used by the Manufacture Control
Agency to avoid operator data-entry errors." (Grundy at 19:4-8, figure
citations omitted, emphasis added.)
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61.
RICHARDSON, ill
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
From the foregoing, Grundy understood well the use of checksums
according to the POSA's and dictionary definitions described above; therefore one may
assume that his understanding of checks urns applies to all of the disclosures of that term
in his patent, including the "checksum of the user data" as referred to above.
62.
Grundy shows the input data to this 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 12:37-38).
Such data might take up roughly
a hundred bytes of data. As indicated above, a checksum of this data would not preserve
its uniqueness; many different sets of user data could produce the same checksum.
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.
64.
Therefore the checksum as disclosed in Grundy cannot function as a
generator of unique identifiers, which is a required characteristic of the claimed LUID.
Grundy thus does not overcome the acknowledged deficiency in Hellman.
65.
I therefore disagree with the factual conclusions
action with respect to the teachings of Hellman and Grundy-neither
stated in the Office
of them teach or
disclose licensee unique ID generation.
Extension of Arguments to Independent Claim 12:
66.
As with claim 1, the '216 Office action also rejects claim 12 of the
'216 patent on grounds of obviousness
with respect to Hellman in view of Grundy.
Claim 12 of the '216 patent recites a "registration system" to generate a "security key"
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from information
"registered
input to said software
RICHARDSON, III
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
which "uniquely"
identifies
an intended
user" of said software on a computer on which said software is to be
installed.
67.
As discussed above, I understand the term "Security Key" in claim 12
to be synonymous with the "unique identifier associated with a licensee."
As previously
discussed with regard to claim 1, Hellman fails to disclose an identifier associated with a
licensee.
Hellman also fails to disclose an identifier associated with a licensee that is
also unique.
For these reasons, Hellman fails to disclose the "security key" recited in
claim 12.
68.
Using
the
reasoning
discussed
above
(see
paragraphs
37-47),
Hellman does not teach or disclose the claim 12 element of "generating a security key
from information input to said software which uniquely identifies an intended registered
user of said software on a computer on which said software is to be installed."
By the
same reasoning, Hellman does not teach or disclose "wherein said registration system is
replicated at a registration authority."
69.
The Office action again relies on Grundy to allegedly satisfy the claim
element "information
input to said software which uniquely identifies
an intended
registered user of said software on a computer on which said software is to be installed"
through the generation of a checksum.
The Office action states that Grundy supplies
"user data," but Grundy's use of a checksum cannot "uniquely identif[y] an intended
registered user of said software" for reasons given above.
70.
Grundy does teach "allocating a unique user code to the user of the
information product" (Grundy at 24:60-61), but this is not the same thing as uniquely
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RICHARDSON, III
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
identifying a user. If the data input by the user is not unique then the "unique user code"
does not confer uniqueness on it. On the contrary, it could result in different unique user
codes being assigned to the same user (who has more than one computer on which he
intends to use the software).
71.
For the above stated reasons, I disagree with the factual conclusions
stated in the Office action surrounding the teachings of Hellman and Grundy as they are
applied to claim 12.
Extension of Arguments to Independent Claim 17:
72.
As with claim 1, the '216 Office action also rejects claim 17 of the
'216 patent on grounds of obviousness
with respect to Hellman in view of Grundy.
Claim 17 of the '216 patent recites a method comprising providing registration
generating
means adapted
to generate
a registration
key which is a function
key
of
information unique to an intending user of the software.
73.
As discussed above, I understand the terms "Registration
Key" and
"Enabling Key" to be synonymous with "a unique identifier associated with a licensee."
As previously discussed in regards to claim 1, Hellman fails to disclose an identifier
associated with a licensee. Hellman also fails to disclose an identifier that is unique and
therefore fails to disclose either the registration
key or the enabling key recited in
independent claim 17.
74.
Using the reasoning discussed above (see paragraphs 37-47), Hellman
does not teach or disclose a "method further comprising providing registration
generating
means adapted
to generate
a registration
key which is a function
key
of
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information
RICHARDSON, III
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
unique to an intending user of the software."
By the same reasoning,
Hellman does not teach or disclose an "enabling key generated by a third party means of
operation of a duplicate copy of said registration key generating means."
75.
In supporting his rejection of claim 17, the Office action asserts that
Hellman allegedly discloses means for switching "between a fully enabled mode and a
partly enabled or demonstration
mode" as per claim 17.
The Office action to cites
Hellman's mention of such an invention in the prior art (Hellman at 2:14-48).
76.
I disagree that Hellman's prior art reference teaches mode switching.
Hellman does not identify his prior art reference, so I rely solely on Hellman's
own
description of it as cited above. As Hellman describes it:
"The manufacturer provides each customer for its program
with two versions: the regular version is in a sealed
envelope, and a 'degraded' version, which only allow[s] up
to 30 records per file. Within a 30 day trial period, the
manufacturer allows the customer to return the regular
version in its sealed envelope for a refund. This way, the
customer can experiment with the degraded version to
determine if he wants the full package."
(Hellman at 2:15-23)
77.
This describes two completely
which happens to be a '''degraded'
separate software packages, one of
version" of the "full package."
It does not describe
means of switching use modes of a given piece of software from one to the other.
78.
The Office action further cites Grundy's use of "a checksum, which is
used as a registration key, that is derived at least in part from the user data."
that the Office action cites this to satisfy the claim 17 element
generating
means adapted to generate
a registration
information
unique to an intending user of the software."
I assume
"registration
key which is a function
key
of
I disagree that Grundy's
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RICHARDSON, III
ReexamofPat. No. 5,490,216
Reexam Control No.: 90/010,831
checksum meets this claim element for reasons described above under claim 12 (see
paragraphs 69-70) as well as claim 1 (see paragraphs 49-64).
79.
For the above reasons, I disagree with the factual conclusions stated in
the Office action in support of its rejection of claim 17 (and claim 18 which depends
from claim 17) over Hellman in view of Grundy.
Extension of Arguments to Independent Claims 19 and 20:
80.
As with independent
claim 1, the '216 Office action also rejects
claims 19 and 20 of the '216 patent on grounds of obviousness with respect to Hellman
in view of Grundy. Like claim 1, independent claims 19 and 20 of the '216 patent both
recite a "local licensee unique ID" and a "remote licensee unique ID," and "wherein said
remote licensee unique ID generation means comprises software executed on a platform
which includes the algorithm utilized by said local licensee unique ID generation means
to produce said licensee unique ID."
81.
As previously discussed in regards to claim 1, (see paragraphs 34-65),
neither Hellman nor Grundy, alone or in combination, teach or disclose a "local licensee
unique ID," a "remote licensee unique ID," and "wherein said remote licensee unique ID
generation comprises software executed on a platform which includes the algorithm
utilized by said local licensee unique ID generation to produce said licensee unique ID."
82.
Independent claim 19 is similar to claim 1 except disclosed from the
perspective of the remote system instead of the user's computer.
In rejecting claim 19,
the Office action relies on the same arguments expressed in rejecting claim 1, regarding
obviousness over Hellman in view of Grundy's
checksum for generating unique IDs,
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RICHARDSON, III
Reexam of Pat. No. 5,490,216
Reexam Control No.: 901010,831
stating that "Hellman discloses a system including local licensee unique ID generation"
and that "Grundy discloses an analogous algorithm for unique ID generation, wherein the
unique ID, a registration code, is produced by performing a checksum of the user data
component fields."
(Office action, p. 12).
Accordingly,
I disagree with the factual
conclusions expressed in the Office action in support of the rejection of independent
claim 19 for the same reasons as for claim 1 above; see paragraphs 34-65 above.
83.
Independent claim 20 is a method claim that is otherwise similar to
claim 1 (a system claim).
In rejecting claim 20, the Office action relies on the same
arguments expressed to reject claim 1, regarding obviousness over Hellman in view of
Grundy's checksum for generating unique IDs. Accordingly, I disagree with the factual
conclusions expressed in the Office action in support of the rejection of claim 20 for the
same reasons as for claim 1 above; see paragraphs 34-65 above.
Atty. Dkt. No. 2914.001REXO
RICHARDSON, III
Reexam of Pat. No. 5,490,216
Reexam Control No.: 90/010,831
- 24-
I hereby declare that all statements made herein of my own knowledge are true
and that all statements made on information
and belief are believed to be true; and
further that these statements were made with the knowledge that willful false statements
and the like so made are punishable by fine or imprisonment,
or both, under Section
1001 of Title 18 of the United States Code, and that such willful false statements may
jeopardize the validity of the '216 patent.
Executed this 23rd day of November 2010 in New York, NY.
Respectfully submitted,
William R. Rosenblatt
Atty. Dkt. No. 2914.001REXO
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