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

Filing 254

REPLY to Response to Motion re 243 Opposed MOTION for Leave to Construe Previously Construed Term filed by Pervasive Software, Inc.. (Attachments: # 1 Exhibit A)(Huston, Charles)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
UNILOC USA., INC., et al.
Plaintiffs,
v.
NATIONAL INSTRUMENTS CORP., et al.
Defendants.

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CIVIL ACTION NO. 6:10-CV-00472-LED

JURY TRIAL DEMANDED

PERVASIVE SOFTWARE INC.’S REPLY TO PLAINTIFFS’ RESPONSE
IN OPPOSITION TO MOTION FOR LEAVE TO CONSTRUE
PREVIOUSLY CONSTRUED TERM
Uniloc would have this Court believe that the Examiner’s explicit claim construction in
the Reexamination of the ‘216 Patent, which concluded August 5, 2011, can be ignored by this
Court in its Markman hearing and claim construction. The meaning of the term “licensee unique
ID” was a critical part of the Reexamination and should be controlling. Indeed, the Patent Office
explicitly construed the term “licensee unique ID” on August 5, 2011 and this construction
should be considered by this Court.
Uniloc argued throughout the Reexamination that the Patent Office was misconstruing
the claims by giving certain terms an unreasonably broad interpretation, see for example the
Rosenblatt Declaration referenced below. Uniloc was successful in having the Patent Office
adopt a narrow claim construction to avoid the prior art, culminating in the August 5, 2011
Office Action confirming claims 1-20, attached hereto as Exhibit A. Most importantly, in the
STATEMENT OF REASONS FOR PATENTABLITLIY AND/OR CONFIRMATION, Exhibit
A at p. 5, the Examiner adopted a restricted claim construction for the term “licensee unique ID”
as a basis for confirming the claims:

The licensee unique ID generated by the means recited in each of the claims must
be derived from at least piece of information that is specific to the user, such as
name, billing information, or product information unique to the instantiation
entered by the user. The information cannot be specific to the computer or
independently generated by the computer.
What Uniloc seeks to do is advocate a narrow claim construction before the Patent Office
to avoid the prior art, but advocate a broad claim construction before this Court to ensnare
potential infringers practicing the prior art. The Patent Office’s reexamination construction of
the term “licensee unique ID” is not inconsistent with prior court decisions and should be
considered by this Court in construing the term.

THE ROSENBLATT DECLARATION IS RELEVANT
The Rosenblatt Declaration is one of many examples where Uniloc advocated a narrow
claim construction of “licensee unique ID” to the Patent Office in the Reexamination to avoid the
prior art. For example, at paragraph 22 Rosenblatt urges that:
"Derived from" suggests a calculation or algorithm that takes the user information
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.
Other examples exist in the Reexamination File History where Uniloc advocated a narrow claim
construction of “licensee unique ID” which should be considered by this Court in construing the
term.
A primary task for this Court during claim construction is to consider the prosecution
history and prior art to determine how the Patent Office and Inventor understood the invention.
Phillips v. AWH Corporation, 415 F.3d 1303, 1317 (Fed. Cir. 2005). Here, the Patent Office
made an explicit claim construction of the term “licensee unique ID.” See, 37 CFR. 1.104(e).

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TIMELINESS
Uniloc complains bitterly about the timeliness of Pervasive’s Motion for Leave to
Construe Previously Construed Term. Uniloc appears to make the argument that defendants
should have filed a motion prior to the meet and confer conference of August 25, 2011. Such a
reading of this Court’s Memorandum Opinion of May 20, 2011 makes no sense and would
subject this court to needless motion practice. On August 25, 2011 during the meet and confer
conference, Pervasive learned that Uniloc would not agree to have this Court construe the term
“licensee unique ID,” notwithstanding the Patent Office construction of that term on August 5,
2011.
The Rosenblatt Declaration (Exhibit A to Pervasive’s Motion for Leave to Construe
Previously Construed Term, Document 243-1) was not available from the Patent Office. Uniloc
supplied the Rosenblatt Declaration to defendants at 5:53 a.m. August 29. Pervasive filed its
Motion several hours later at 3:13 p.m. on August 29. Under any standard, Pervasive’s Motion
for Leave to Construe Previously Construed Term was timely.

CONCLUSION
The Patent Office confirmed the claims of the ‘216 Patent based on a restricted claim
construction for the term “licensee unique ID” a few weeks ago. For the reasons set forth above,
good cause exists for this Court to construe the term “licensee unique ID”.

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Dated: September 9, 2011

Respectfully submitted,
By: /s/ Charles D. Huston
Charles D. Huston
State Bar No. 10328950
DAFFER MCDANIEL, LLP
700 Lavaca Street, Suite 720
Austin, TX 78701
Tel. [phone]
Fax [phone]
ATTORNEYS FOR PERVASIVE
SOFTWARE INC.

CERTIFICATE OF SERVICE
The undersigned certifies that on September 9, 2011 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 pursuant to Local Rule CV-5(a)(3)(A).
/s/ Charles D. Huston
Charles D. Huston

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