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

Filing 265

Responsive CLAIM CONSTRUCTION BRIEF filed by FileMaker, Inc., Pervasive Software, Inc., Symantec Corp.. (Attachments: # 1 Exhibit 1 - '216 patent, # 2 Exhibit 2 - PTO Amendment, # 3 Exhibit 3 - Reply to PTO, # 4 Exhibit 4 - Response to PTO, # 5 Exhibit 5 - PTO Notice of Reexam, # 6 Exhibit 6 - PTO Dec of Pooch, # 7 Exhibit 7 - PTO Interview Summary, # 8 Exhibit 8 - PTO Dec of Rosenblatt)(Jones, Michael)

DEFENDANTS’ RESPONSIVE BRIEF ON
CLAIM CONSTRUCTION

EXHIBIT 3

67274

U.S. PTO

\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
11/29/10

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re reexamination of:

Frederic B. RICHARDSON, III

Confirmation No.: 2214
Art Unit: 3992

Control No.: 901010,831

Examiner: HENEGHAN, Matthew

Filed: January 22,2010

Atty. Docket: 2914.001REXO

For: System for Software Generation

Reply to Office Action in Ex Parte Reexamination
Mail Stop Ex Parte Reexamination
Central Reexamination Unit
Commissioner for Patents
PO Box 1450
Alexandria, VA 22313-1450
Sir:
Patent Owner hereby replies to the Office Action in the above-captioned ex

parte reexamination dated September 28, 2010. The due date for reply is November
29,2010.
Status of the Claims is reflected in the listing of claims, which begins on page
3 of this paper.
Remarks begin on page 7 of this paper.
If additional fees are necessary to prevent abandonment of this reexamination,
then such fees are hereby authorized to be charged to our Deposit Account No.
19-0036.

UNI075086

-2-

RICHARDSON, ID.
Control No. 90/010,831

Table of Contents

Listing of Claims .......................................................................................................................... 3
Remarks ....................................................................................................................................... 7
I.
STATEMENT OF THE SUBSTANCE OF THE INTERVIEW ............................................ 8
II.
BACKGROUND INFORMATION ........................................................................................ 8
A.
Status of Concurrent Litigation ........................................................................................... 8
B.
Claimed Invention ............................................................................................................... 9
1.
Background .................................................................................................................... 9
2.
Brief overview of the claimed invention ...................................................................... 11
III.
LEGAL STANDARDS ..................................................................................................... 12
A.
Claim Construction ........................................................................................................... 12
B.
Means Plus Function Limitations ...................................................................................... 13
C.
Legal Overview of Obviousness Rejections Under 35 U.S.C. § 103 ................................ 15
D. The Hellman/Grundy SNQ is Improper Because Grundy was Previously Considered
During Original Examination ..................................................................................................... 16
N.
RESPONSE TO THE ADOPTED SUBSTANTNE CLAIM REJECTIONS .................. 17
A.
Overview of Rejections Under 35 U.S.c. § 103, Hellman in view of Grundy ................. 17
B.
Independent Claims 1, 19 and 20 ...................................................................................... 19
1.
Independent Claim 1..................................................................................................... 19
(a) Hellman Does Not Teach or Suggest the "Licensee Unique ID" of Claim 1........... 20
(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 1 ....... 26
(c) Summary with respect to Hellman and Grundy with respect to independent claim 1.
................................................................................................................................. 28
2.
Independent Claim 19: ................................................................................................. 28
(a) Hellman Does Not Teach or Suggest the "Licensee Unique ID" of Claim 19 ......... 29
(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 19 ..... 30
3.
Independent Claim 20: ................................................................................................. 30
(a) Hellman Does Not Teach or Suggest "Licensee" Unique ID" of Claim 20 .............. 31
(b) Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 20 ..... 32
C.
Independent Claim 12: ...................................................................................................... 32
1.
Hellman Does Not Teach or Suggest "Generating a Security Key" of Claim 12 ......... 33
2.
Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 12 .......... 33
D. Independent Claim 17: ...................................................................................................... 34
1.
Hellman Does Not Teach or Suggest "Generating a Registration Key" of Claim 17 .. 34
2.
Grundy Does Not Cure the Deficiencies of Hellman with Respect to Claim 17 .......... 35
V. OBJECTNE INDICIA OF NON-OBVIOUSNESS ............................................................. 36
A. Commercial Success ......................................................................................................... 37
B.
The Uniloc '216 Patent Has Been and Continues to Be Extensively Licensed ................ 37
C.
Uniloc's Technology and Inventions Have Been Praised by Others ................................ 38
D. The '216 Patented Technology Meets a Long-Felt Need.................................................. 38
E.
A Nexus Exists Between the Commercial Success ofUniloc's Software Activation and
Fraud Prevention Solutions and the Claims of the '216 Patent.. ................................................ 39
F.
Conclusion with Respect to Secondary Indicia of Non-Obviousness ............................... 39
Conclusion ................................................................................................................................. 40

Atty. Dkt. No. 2914.001REXO

UNI075087

-3-

RICHARDSON, ID.
Control No. 90/010,831

Listing of Claims
Original claims 1-20 from U.S. Patent No. 5,490,216 to Richardson ("the '216
patent") are subject to ex parte reexamination. No claims are cancelled or amended.
1.

A registration system for licensing execution of digital data in a use mode,

said digital data executable on a platform, said system including local licensee unique ID
generating means and remote licensee unique ID generating means, said system further
including mode switching means operable on said platform which permits use of said digital
data in said use mode on said platform only if a licensee unique ID first generated by said
local licensee unique ID generating means has matched a licensee unique ID subsequently
generated by said remote licensee unique ID generating means; and wherein said remote
licensee unique ID generating means comprises software executed on a platform which
includes the algorithm utilized by said local licensee unique ID generating means to produce
said licensee unique ID.

2.

The system of claim 1, wherein said local licensee uruque ID generating

means generates said local licensee unique ID by execution of a registration algorithm which
combines information in accordance with said algorithm, said information uniquely
descriptive of an intending licensee of said digital data to be executed in said use mode.

3.

The system of claim 2, wherein said mode switching means permits operation

of said digital data in said use mode in subsequent execution of said digital data only if said
licensee unique ID generated by said local licensee unique ID generating means has not
changed.

4.

The system of claim 3, wherein said local licensee uruque ID generating

means comprises part of said digital data when executed on said platform.

5.

The system of claim 4, wherein said mode switching means comprises part of

said digital data when executed on said platform.

Atty. Dkt. No. 2914.001REXO

UNI075088

- 4-

6.

RICHARDSON, ID.
Control No. 90/010,831

The system of claim 5, wherein the information utilized by said local licensee

unique ID generating means to produce said licensee unique ID comprises prospective
licensee details including at least one of payment details, contact details and name.

7.

The system of claim 1, said system further including platform unique ID

generating means, wherein said mode switching means will permit said digital data to run in
said use mode in subsequent execution of said digital data on said platform only if said
platform unique ID has not changed.

8.

The system of claim 7, wherein said platform unique ID generating means

comprises part of said digital data when executed on said platform.

9.

The system of claim 8, wherein said platform unique ID generating means

utilizes hard disc or other platform information to determine said platform unique ID.

10.

The system of claim 1, wherein said platform comprises a computer operating

system environment.

11.

The system of claim 10, wherein said digital data comprises a software

program adapted to run under said operating system environment.

12.

A registration system attachable to software to be protected, said registration

system 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; and wherein said registration system is replicated at a registration authority
and used for the purposes of checking by the registration authority that the information
unique to the user is correctly entered at the time that the security key is generated by the
registration system.

13.

The registration system of claim 12, wherein said security key is generated by

a registration number algorithm.

Atty. Dkt. No. 2914.001REXO

UNI075089

-5-

14.

RICHARDSON, ID.
Control No. 901010,831

The registration system of claim 13, wherein said registration number

algorithm combines information entered by a prospective registered user unique to that user
with a serial number generated from information provided by the environment in which the
software to be protected is to run.

15.

The registration system of claim 12, wherein said registration system checks at

the time of boot of said software as to whether it is a first boot of the software to be protected
or a subsequent boot, and, if a subsequent boot is detected, then environment and user details
. are compared to determine whether the program reverts to a demonstration mode and a new
user registration procedure is to commence or a full version run.

16.
comprise at

17.

The registration system of claim 15, wherein said environment details
least one element which is not user-configurable

on the platform.

A method of control of distribution of software, said method compnsmg

providing mode-switching means associated with said software adapted to switch said
software between a fully enabled mode and a partly enabled or demonstration mode, said
method further comprising providing registration key generating means adapted to generate a
registration key which is a function of information unique to an intending user of the
software; said mode-switching means switching said software into fully enabled mode only if

an enabling key provided to said mode-switching means by said intending user at the time of
registration of said software has matched identically with said registration key; and wherein
said enabling key is communicated to said intending user at the time of registration of said
software; said enabling key generated by a third party means of operation of a duplicate copy
of said registration key generating means.

18.

The method of claim 17, wherein said registration key is also a function of the

environment in which said software is installed.

Atty. Dkt. No. 2914.001REXO

UNI075090

-6-

19.

RICHARDSON, III.
Control No. 90/010,831

A remote registration station incorporating remote licensee unique ID

generating means, said station forming part of a registration system for licensing execution of
digital data in a use mode, said digital data executable on a platform, said system including
local licensee unique ID generating means, said system further including mode switching
means operable on said platform which permits use of said digital data in said use mode on
said platform only if a licensee unique ID generated by said local licensee unique ID
generating means has matched a licensee unique ID generated by said remote licensee unique
ID generating means; and wherein said remote licensee unique ID generating means
comprises software executed on a platform which includes the algorithm utilized by said
local licensee unique ID generating means to produce said licensee unique ID.

20.

A method of registration of digital data so as to enable execution of said

digital data in a use mode, said method comprising an intending licensee operating a
registration system for licensing execution of digital data in a use mode, said digital data
executable on a platform, said system including local licensee unique ID generating means
and remote licensee unique ID generating means, said system further including mode
switching means operable on said platform which permits use of said digital data in said use
mode on said platform only if a licensee unique ID generated by said local licensee unique ID
generating means has matched a licensee unique ID generated by said remote licensee unique
ID generating means; and wherein said remote licensee unique ID generating means
comprises software executed on a platform which includes the algorithm utilized by said
local licensee unique ID generating means to produce said licensee unique ID.

Atty. Dkt. No. 2914.001REXO

UNI075091

RICHARDSON, III
Control No. 901010,831

- 7-

Remarks
The '216 patent has 20 total claims, of which claims 1, 12, 17, 19 and 20 are
independent claims. Claims 1-20 are subject to ex parte reexamination and stand rejected in
the Office Action dated September 28, 2010 ("Office Action"). The Patent Owner, Uniloc
Singapore Private Limited ("Uniloc") respectfully traverses the rejections.

Based on the

following remarks, Uniloc respectfully requests that all outstanding rejections be
reconsidered and withdrawn.
Section I provides a statement concerning the substance of the interview conducted

on November 17, 2010.

Section II provides some relevant background information,

including the status of the litigation and an overview of the claimed invention with reference
to Declarations from Messrs. Richardson and Marwaha under 37 CFR § 1.132 ("Rule 132").
Section III addresses issues of law that pertain to the Office Action, claim construction, and

this response. Section IV addresses the adopted substantive claim rejections from the Office
Action, with reference to the Rule 132 Declaration from William Rosenblatt.

Section V

addresses objective indicia of non-obviousness with reference to the Rule 132 Declaration
from Brad Davis.
Also attached hereto are the following Exhibits:
Exhibit A: Rule 132 Declaration of William Rosenblatt
Exhibit B: Rule 132 Declaration of Ric B. Richardson
Exhibit C: Rule 132 Declaration of Brad Davis
Exhibit D: Rule 132 Declaration ofRavindra Marwaha
Exhibit E: Transcript of Martin E. Hellman, Uniloc USA, Inc. et al. v.
Microsoft Corp., C.A. No. 03-440 (D.R.I.)
Exhibit F:

Uniloc USA, Inc. et al. v. Microsoft Corp., 447 F.Supp.2d
177 (D.R.1. 2006), Decision and Order Regarding Claim
Construction

Exhibit G: Uniloc USA et al. v. Microsoft Corp., Case No. 2008-1121,
(Fed. Cir. 2008), Opinion, Including Affirmation of Claim
Construction

Atty. Dkt. No. 2914.001REXO

UNI075092

- 8-

I.

RICHARDSON, III.
Control No. 90/010,831

STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
An interview was held on Wednesday, November 17,2010, with Primary Examiner

Matthew Heneghan, and two conferees.

Present at the interview for Uniloc were: Ric B.

Richardson III (Inventor and Founder), Brad Davis (CEO, current Board member of Uniloc
Singapore Private Limited), Sean D. Burdick (Uniloc Patent Counsel, Reg. No. 51,513),
William Rosenblatt (Technical Expert), Robert G. Sterne (Reexam Counsel, Reg. No.
28,912), Jon E. Wright (Reexam Counsel, Reg. No. 50,720), Robert W. Molitors (Reexam
Counsel, Reg. No. 66,726), James L. Etheridge (Uniloc Outside Counsel, Reg. No. 37,614.)
At the interview, Uniloc presented a PowerPoint presentation, a copy of which was
provided to the panel for the record. As outlined in the presentation, the following areas were
discussed:
Introductions
Background of Invention Claimed in U.S. Patent No. 5,490,216
Overview ofUniloc
Microsoft Alleged Infringement
U.S. Patent No. 4,658,093 to Hellman in view of U.S. Patent No.
5,291,598 to Grundy and Why Claims 1-20 are patentable over the
Combination
Objective Indicia of Non-Obviousness
The substance of the interview followed this agenda. No agreement was reached on
the claims in reexamination.

II.

BACKGROUND INFORMATION

A.

Status of Concurrent Litigation

Uniloc filed its initial suit against Microsoft Corporation in the United States DistriCt
Court for the District of Rhode Island in September 2003 for infringement of the '216 patent.

See Uniloc USA, Inc. et al. v. Microsoft Corp., C.A. No. 03-440 (D.R.I.). In October 2007,
the Rhode Island District court granted summary judgment of non-infringement in
Microsoft's favor. Uniloc appealed to the United States Court of Appeals for the Federal
Circuit. In August 2008, the Federal Circuit reversed and remanded the district court's grant

Atty. Dkt. No. 2914.001REXO

UNI075093

-9-

RICHARDSON, III.
Control No. 901010,831

of summary judgment. See Uniloc USA et al. v. Microsoft Corp., Case No. 2008-1121 (Fed.
Cir.2008).

On remand, in April 2009, a jury awarded Uniloc $388 million in damages based on
Microsoft's infringement of the '216 patent. However, in September 2009, the district court
granted Microsoft's motion for judgment as a matter of law (JMOL) for non-infringement.
Uniloc filed an appeal with the United States Court of Appeals for the Federal Circuit in
February 2010. The issue currently on appeal to the Federal Circuit is whether the district
court properly entered a JMOL in this case on infringement and associated damages. That
case was argued on September 7,2010.
The issue of claim construction is not on appeal. The district court's August 22,2006,
claim construction order is attached as Exhibit F. The Federal Circuit reviewed the district
court's claim construct de novo in its 2008 opinion and concluded that the "district court
correctly construed the 'licensee unique ill' as a unique identifier associated with a licensee
that can be, but is not limited to, personally identifiable information about the licensee or
user."

(See, Exhibit G, p. 12.)

Furthermore, the district court concluded that "neither

Hellman· nor Wolfe disclose use of unique user information in lieu of a hardware identifier
based system." Uniloc USA, Inc. v. Microsoft Corp., 640 F.Supp.2d 150, 182 (D.R.1. 2009.)

B.

Claimed Invention
1.

Background

The concept behind the '216 patent was Ric Richardson's idea of "try before you
buy" software. Mr. Richardson was involved in the computer music field in the early 1990's.
He owned the rights to a computer music program, One-Step, which he wanted to sell.
However, music stores at that time were not interested in stocking computer software. Mr.
Richardson therefore had to figure out a method of distributing free samples of the program
in a demonstration mode. Mr. Richardson wished to do so in the hopes that people would try
the program and then be able to activate the software. Activation would occur from the piece
of media containing the demonstration version (e.g., a personal computer), after purchasing
the rights to do so. (See, Richardson Dec.,

~7.)

During Mr. Richardson's investigation, an Apple computer representative told Mr.
Richardson that all machines coming off of the production line were "identical."

Mr.

Atty. Dkt. No. 2914.001REXO

UNI075094

- 10-

RICHARDSON, ill.
Control No. 901010,831

Richardson knew that could not be true. After some research, he discovered that there were
ways to identify a "fingerprint" of a particular computer associated with a particular user that
included information such as processor serial settings and branding, hard disk error maps, and
infonnation associated with the user.

After additional research, and trial and error, Mr.

Richardson drafted and filed a patent application in the Australian patent office in September
1992. About one year later, in September 1993, he filed the application with the U.S. Patent
and Trademark Office. (See, Richardson Dec.,

~8.)

Mr. Richardson also enlisted the help of

some developers to transform the ideas claimed in the '216 patent into an actual product and
concurrently moved forward with Uniloc Corporation in order to market and further develop
the product activation software concept. (See, Richardson Dec.,

~9.)

Mr. Richardson then applied the new software product with the One-Step mUSIC
software, later renamed TrueTime, and set off to fulfill his goal of selling computer music
software. (See, Richardson Dec.,

~10.)

But Mr. Richardson realized that companies were far

more interested in applying the product activation software concept to their own software
products. Companies wanted to know how Mr. Richardson could lock a computer program
so people could use the software in a demonstration mode before deciding to purchase it.
This locking prevented casual copying. Unlocking the software (or enabling full use) relied
on a registration system that used, in part, attributes of the individual and the individual's
own specific computer. (See, Richardson Dec.,

~11.)

Mr. Richardson's focus accordingly

shifted to corporate accounts with companies interested in the product activation software
solution concept. His approach was to demonstrate the embedding of the software activation
feature in a software title by adding the '216 patent activation software to an existing
software program, a process Mr. Richardson called "demorize." Mr. Richardson would then
actually demonstrate to a 'prospective software publisher how the product activation software
solution software worked with their actual program.

In fact, at one demonstration with

WordPerfect, they were sure Mr. Richardson was practicing some type of magic and could
not believe such a concept worked. No one else had developed such a concept as product
activation software; indeed, these early demonstrations even preceded the prevalence of the
Internet. (See, Richardson Dec., ~12.)
In 1993, Mr. Richardson demonstrated the product activation software solution
concept, based on the '216 patent technology, to a variety of manufacturing and software
distribution companies. One company was ffiM. The day after the first demonstration to
Atty. Dkt. No. 2914.001REXO

UNI075095

RICHARDSON, ID.
Control No. 901010,831

- 11 -

IBM in Boulder, Colorado, Mr. Richardson received a partnership proposal that resulted in a
marketing agreement that continued through 1996.

(See, Richardson Dec.,

~13.)

(See,

Marwaha Dec., ~~4-8.).
Under the IBM partnership, one ofUniloc's first successes was the sale of thousands
of copies of a software package by the name of "First Aid," developed by CyberMedia,
which was featured on the cover of Windows Sources Magazine in 1994.

Uniloc also

developed a relationship with the publisher Ziff Davis to distribute unlockable versions of
software. These were featured on the front cover of their magazines, including Windows
Sources Magazine. (See, Richardson Dec.,

~14.)

In 1997-1998, Uniloc produced preloaded, lockable editions of popular software
products that were included on new personal computers. Distribution agreements had been
reached with companies such as eMachines and Toshiba. Family PC magazine also featured

Mr. Richardson's unlockable software on the cover of their magazine in 2000.
Richardson Dec.,

~15.)

(See,

Uniloc prepared demonstration disketteslCDs for over 1000 products.

Retail sales included "end-cap" displays in retail software storefronts throughout the United
States. (See, Richardson Dec.,

~16.)

By the end of 2001 Uniloc was responsible for the

distribution of over 1.4 million copies of CDs with over 1 million products pre-loaded and
distributed in e-machine computers that incorporated the '216 patent technology.

(See,

Richardson Dec., ~17.)
Business continued to expand including new business relationships with companies
including Toshiba. For example, all Toshiba laptops shipped by mid-2002 included a DVD
with thirty locked software titles using the '216 patented technology. (See, Richardson Dec.,
~18.)

2.

Brief overview of the claimed invention

The '216 patent introduces the concept of controlling usage of software on a computer
system by generating local and remote licensee unique IDs. A "local licensee unique ID" is
generated for the intended licensee.

It preferably combines information entered by a

prospective user that is unique to that user, along with an identifier generated from
information provided by the environment on which the protected software is to run. (See,
Richardson Dec.,

~5.)

The algorithm that generates the local licensee unique ID is duplicated

at a remote location under the control of the licensor and generates a "remote licensee unique
Atty. Dkt. No. 2914.001REXO

UNI075096

- 12 -

RICHARDSON, III
Control No. 901010,831

ID" at the remote location. The local and remote licensee unique IDs are compared and if
they match identically, the system will allow licensed operation (e.g., full, unrestricted use) of
the software. (See, Richardson Dec.,

III.

~6.)

LEGAL STANDARDS
The standard of review for determining patentability is "preponderance of the

evidence."

(MPEP § 706.1.)

The examiner must weigh the evidence presented for and

against patentability and if it is more likely than not that the claims are patentable, they must
be allowed. (Id.) Patentability is determined through the lens of one having ordinary skill in
the art at the time the application was filed. Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc.) Further, the scope of the claims in patent applications is to be
determined "not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be interpreted by
one of ordinary skill in the art.'"

Id. (quoting In re Am. A cad. of Sci. Tech. Ctr., 367 F.3d

1359, 1364 (Fed. Cir. 2004)).

A. Claim Construction
Despite the fact that Patent Owner in reexamination does not have the same freedom
to amend claims as applicants do during regular prosecution, the Office nonetheless uses the
"broadest reasonable interpretation" standard during reexamination. MPEP 2258.G; see also

In re Trans Texas Holdings, Corp., 498 F.3d 1290, 1292 (Fed. Cir. 2007). However, even
under that standard, the Office must still interpret "the scope of claims ... not solely on the
basis of the claim language, but upon giving claims their broadest reasonable interpretation
'in light of the specification as it would be interpreted by one of ordinary skill in the art.'
MPEP 2111; citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (emphasis added);

see also, In re Am. Acad. a/Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Indeed, the Federal Circuit has stated that the "PTO applies to verbiage of the
proposed claims the broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in applicant's specification." In re Morris, 127 F.3d 1048, 1054-55
(Fed. Cir. 1997) (emphasis added).

Claim construction under the "broadest reasonable
Atty. Dkt. No. 2914.001REXO

UNI075097

- 13 -

RICHARDSON, III.
Control No. 90/010,831

construction" rubric is thus not an unfettered license to divorce the claims from the
specification of which they are a part. For instance, in In re Buszard, the Federal Circuit
found the PTO's alleged "broadest reasonable interpretation" to be unreasonable where the
claims and the specification specifically supported the applicant's construction and were
contrary to the Office's construction. In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). It
is thus well settled that under the "broadest reasonable interpretation" standard, the Office is
still required to interpret the claims in a reasonable manner and in light of the specification.
B. Means Plus Function Limitations

Several claimed elements are presented in the functional format permitted by 35
U.S.c. § 112, paragraph 6, in "means-plus-function language." (See, Office Action, p.5.)
Where means-plus-function language is used to define characteristics, the "[d]isclosure may
be express, implicit, or inherent," and "USPTO personnel are to give the claimed means plus
function limitations their broadest reasonable interpretation consistent with all corresponding
structures or materials described in the specification and their equivalents including the
manner in which the claimed functions are performed." (MPEP 2106(II)(C); citing Kemco
Sales, Inc.v. Control Papers Company, Inc., 208 F.3d 1352 (Fed. Cir. 2000).
For example, the structure corresponding to the claim 1 term "local licensee unique
ID generating means," is disclosed in the '216 patent as structure corresponding to both
software, in the form of an algorithm, and hardware in the form of a summer. Specifically
with respect to software, the '216 patent states that the "algorithm, in this embodiment,
combines by addition the serial number 50 with the software product name 64 and customer
information 65 and previous user identification 22 to provide registration number 66." (See,
'216 patent, 11:53-56.) Specifically with respect to hardware, the '216 patent states that, for
example, "[ s]ummer 85 acts as a local licensee unique ID generating means by combining, by
addition, customer information C, product information P and serial number S in order to
provide a local licensee unique ID here designated Y." (See, '216 patent 12:62-65.)
Based on the disclosed structure from the '216 patent specification, a person of skill
in the art would readily appreciate that, for example, the "local licensee unique ID generating
means" of claim 1 is directed to the function of generating a local licensee unique
ID/registration key. And the corresponding structural component is a summation algorithm
or a summer as described in the specification, in addition to all equivalents. With respect to
Atty. Dkt. No. 2914.001REXO

UNI075098

- 14-

RICHARDSON, Ill.
Control No. 90/010,831

the "remote licensee unique ID generating means," the '216 specification similarly discloses
the corresponding structure both as a software algorithm and as hardware in the fonn of a
summer.
As noted, the Office recognized the means-plus-function nature of some of the
claimed elements and specifically noted the corresponding structure in the '216 patent
specification. (Office Action p. 5.) But the Office did not explicitly recognize that a range of
equivalent structures may also fall within the claim scope. The district court's 2008 claim
construction analysis for the means-plus-function claims is therefore set forth below for ease
of reference.
Term
local
licensee
unique ID
Generating
Means:

remote
licensee
unique ID
Generating
Means:

Mode
Switching
Means:

District Court Construction
"[T]he '216 Patent discloses as corresponding structure both software, in
the form of an algorithm, see '216 Patent, col. 11, 11. 53-56, and
hardware, in the form ofa summer. See id, at col. 12,11.62-65." {Uniloc
USA, Inc. v. Microsoft Corp., 447 F.Supp.2d 177, 191 (D.R.I. 2006).)
"Function: to generate a local or remote licensee unique ID/registration
key; Structure: a summation algorithm or a summer and equivalents
thereof." !d. at 192.
"[T]he '216 Patent discloses as corresponding structure both software, in
the form of an algorithm, see '216 Patent, col. 11, 11. 53-56, and
hardware, in the fonn of a summer. See id, at col. 12, 11. 62-65." ld. at
191.
"Function: to generate a local or remote licensee unique ID/registration
key; Structure: a summation algorithm or a summer and equivalents
thereof." ld. at 192.
"[T]he specification discloses both hardware, in the form of a
comparator, see '216 Patent, col. 13,11.37-40 ('[c]omparator 90 together
with gates 91, 92 and relay 93 comprise one particular form of mode
switcher or switching platform 83 of various kinds of code such as the
code of types D and U'), and software, in the fonn of code. Id. at col. 6,
11. 12-14 ('[m]ode switching means can comprise execution of the code
portion which additionally performs a comparison of the locally and
remotely generated registration numbers' .)" ld. at 199.
"Function: to permit the digital data or software to run in a use
mode/fully enabled mode if the locally generated licensee umque
ID/registration key matches with the remotely generated a licensee
unique ID/enabling key; Structure: program code which performs a
comparison of two numbers or a comparator and equivalents thereof."
ld. at 200.

Atty. Dkt. No. 2914.001REXO

UNI075099

- 15 -

Platform
Unique ID
Generating
Means:
Registration
Key
Generating
Means:

RICHARDSON, III.
Control No. 90/010,831

"In this case, the structure disclosed is software logic, See, e.g., '216
Patent, col. 3, 11. 54-55, and the box in figure 8 labeled as a 'platform
unique LD. generator. '" Id. at 207.
"Function: to generate a platform unique ID; Structure: a summation
algorithm or a summer and equivalents thereof." Id. at 208.
"[T]he '216 Patent discloses as corresponding structure both software, in
the form of an algorithm, see '216 Patent, col. 11, 11. 53-56, and
hardware, in the form of a summer. See id, at col. 12, 11. 62-65." Id. at
"Function: to generate a local or remote licensee unIque
191.
ID/registration key; Structure: a summation algorithm or a summer and
equivalents thereof." Id. at 192.

C. Legal Overview of Obviousness Rejections Under 35 U.S.c. § 103
"Apatent may not be obtained

II.

if the differences between the subject matter sought

to be patented and the subject matter as a whole would have been obvious at the time the
invention was made to a person of ordinary skill in the art to which the subject matter
pertain." 35 U.S.C. § 103(a.) In KSR Int 'I v. Teleflex 550 U.S. 398 (2006), the Supreme
Court reaffirmed its decision in Graham v. John Deere that held that "the scope and content
of the prior art [must] be determined; differences between the prior art and the claims at issue
[must] be ascertained; and the level of ordinary skill in the pertinent art [must be] resolved"
in order to support a finding of obviousness. Graham v. John Deere Co., 383 U.S. 1, 17
(1966.) Graham also set forth "secondary considerations" relevant to nonobviousness such

as "commercial success, long felt but unsolved needs, [and] failure of others." Id. at 17-18.
In order to support a rejection under 35 U.S.e. 103 each element claimed must be

shown in the prior art. M.P .E.P. section 2143 states, emphasis added:
"To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Then, Office personnel must
articulate the following: (1) a finding that the prior art included
each element claimed, although not necessarily in a single prior art
reference, with the only difference between the claimed invention
and the prior art being the lack of actual combination of the
elements in a single prior art reference .... "
If each claimed element is not present in the cited art, then no prima facie case of
obviousness is established. And "if the examiner does not produce a prima facie case, the
applicant is under no obligation to submit evidence of non obviousness." M.P.E.P.2142

Atty. Dkt. No. 2914.001REXO

UNI075100

- 16 -

RICHARDSON, III.
Control No. 90/010,831

D. The Hellman/Grundy SNQ is Improper Because Grundy was Previously
Considered During Original Examination
In a recent Board of Patent Appeals and Interferences (BP AI) decision, the BPAI held
that a SNQ cannot exist where a "reference was previously considered during the original
examination for the same or substantially the same purpose as it is now being considered in
the reexamination." See Ex parte Muzzy Products Corporation, No. 2009-011350, slip op. at
11 (BP AI September 1, 2010).
During original prosecution the Examiner stated that "Grundy teaches a registration
system for licensing execution of digital data in a use mode ... , the system including local
licensee unique ID generating means ... and remote licensee unique ID generating means
(registration code decoded to retrieve User Data and converted to authorization code." (See,
Office Action - 3/30/95, pg. 2.) In nearly identical fashion, the instant Office Action states
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. 7.)

In both the original prosecution and this reexamination,

Grundy is used to allegedly disclose unique ID generation. Therefore, the Grundy reference
was used in this reexamination for substantially the same purpose as during the original
examination.
The facts in this case are slightly different because Grundy is used in combination
with another reference not previously applied by the Office. But Uniloc urges the Office to
extend the decision in Ex Parte Muzzy to strengthen the SNQ requirement by not permitting
Grundy to be used in precisely the same way it was during original prosecution. Such use
should not rise to the level of an SNQ as the issues it presents are neither "substantial" nor
"new" to the question of patentability in this case. The Patent Owner respectfully requests
that the Examiner withdraw the SNQs in this case that are based in any way on Grundy.

Atty. Dkt. No. 2914.001REXO

UNI075101

- 17 -

IV.

RICHARDSON, III.
Control No. 901010,831

RESPONSE TO THE ADOPTED SUBSTANTIVE CLAIM REJECTIONS
A. Overview of Rejections Under 35 U.S.C. § 103, Hellman in view of Grundy

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as allegedly being unpatentable
over U.S. Patent No. 4,658,093 to Hellman l ("Hellman") in view of U.S. Patent No.
5,291,598 to Grundy ("Grundy".) (Office action, p. 6.) Patent Owner traverses the rejection.
The invention implements a unique identifier that is associated with a licensee as a
means for licensing execution (or controlling use) of software to (or by) an intended licensee.
This feature is present in each of the independent claims. For example, in independent claims
1, 19 and 20, this feature is a "licensee unique ill." In claim 12 this feature is a "security
key." In claim 17 this feature is a "registration key" and an "enabling key." Hellman and
Grundy both fail to disclose this claimed element. (See generally, Rosenblatt Dec.,

~~36-82.)

Rather than describe any unique identifier that is associated with an intended licensee,
Hellman instead describes a "method and apparatus in which use of the software can be
authorized for a particular base unit a specific number of times." (See, Hellman 4:38-40.)
More specifically, Hellman further describes the disclosed authorization system as follows:
A manufacturer of base units and software generates a random key and
stores it in a base unit which is sold to a user. When wishing to use a
certain software package, the user's base unit generates a random number
and communicates it to the manufacturer of the software. The software
manufacturer generates an authenticator which is a cryptographic function
of the base unit's key, the software, the number of times use of the
software is authorized, and the random number generated by the base unit.
The authenticator is communicated to the user's base unit. The user's base
unit then uses the same cryptographic function to generate a check value of
the key, the software, the number of times use is authorized, and the
random number which the base unit generated. If the check value and the
authenticator agree, the base unit accepts the authenticator as valid and
increments the number of times use of that software is authorized. (See,
Hellman, 4:46-63)

IThe Office Action on page 4 refers to U.S. Patent No. 5,490,216 to Hellman, U.S.
Patent No. 4,796,220 to Grundy, and U.S. Patent No. 5,291,598 to Wolfe. Patent Owner
respectfully submits that the Examiner meant the references to be for U.S. Patent No.
4,658,093 to Hellman, U.S. Patent No. 5,291,598 to Grundy, and U.S. Patent No. 4,796,220
to Wolfe, and will respond accordingly in this reply. Patent Owner notes that the Wolfe
reference is not relied upon by the Examiner in any claim rejection.
Atty. Dkt. No. 2914.001REXO

UNI075102

RICHARDSON, III
Control No. 90/010,831

- 18 -

Therefore, Hellman discloses an authorization system for use of a software program
based on a key identifier associated with a base unit, e.g., a personal computer.

That

identifier is generated by the manufacturer of the base unit and is not associated with the user,
or intended licensee of the software program.
Hellman further teaches that "base unit 12 generates and communicates to
authorization and billing unit 13 a signal representing a user originated request for software
use," where "[t]his request consists of several parts SOFTWARE NAME, SERIAL
NUMBER, N, R, and BILLING INFORMATION. (Hellman, 5:57-61.) Hellman defines
these terms where "SOFTWARE NAME is the name of the software package to be used;"
"SERIAL NUMBER is a serial number, identification, user name or similar identifier unique
to base unit 12;" "N is the number of additional uses of software requested;" and "R is a
random number, counter value, or other non-repeating number generated by the base unit
12." (Hellman 5:62-68.) As described more fully below, the "request" and "authorization"
are based upon information regarding the desired software program to be authorized, the
number of uses the software package is to be authorized, a non-unique random number, and a
serial number unique to the computer base unit. Therefore, Hellman fails to teach or suggest
a unique identifier that is associated with a licensee.
Grundy does not cure this deficiency of Hellman. The Office alleges that the unique
identifier associated with the licensee is disclosed by Grundy's "checksum." But Grundy's
checksum is solely used to verify the accuracy of user-entered information-it is not a unique
identifier associated with a licensee. More specifically, Grundy describes a "method and
apparatus that monitors and controls the use of information stored on a storage medium."
(Grundy, 4:21-24.) As part of that method, Grundy teaches generating a checksum of the
user data upon entry of the user data, and then packing and encoding the checksummed user
data along with other data (i.e., hardware

ro,

anti-virus checksum, and previous owner ID

number) to generate a "registration code." (See, Grundy 18:10-33 and 18:58-64.) Grundy
discloses that the "registration code is decrypted and then unpacked into its component fields
308." (Grundy, 15:4-6.) Grundy discloses that once the data is unpacked the "user data
cross-reference code and the second checksum 309 are compared 310," and "[i]fthese do not
match it is an indication that the User Data as entered by the Manufacturer Control Agency
operator 301 does not match the User Details as originally entered by the new user."
(Grundy, 15:17-22.) Thus, Grundy's "checksum" is not uniquely associated with an intended
Atty. Dkt. No. 2914.001REXO

UNI075103

- 19 -

RICHARDSON, III.
Control No. 901010,831

licensee. Rather, Grundy's checksum can only be used to indicate whether the user (i.e., the
intended licensee) correctly entered the requested data.
As stated above, each of the independent claims requIres a umque identifier
associated with a licensee. In claims 1, 19 and 20, this is a "licensee unique ill." In claim 12
this feature is a "security key."
"enabling key."

In claim 17 this feature is a "registration key" and an

As demonstrated more specifically below, neither Hellman nor Grundy

teaches, discloses, or suggests this claimed feature.

B. Independent Claims 1, 19 and 20
1.

Independent Claim 1

Independent claim I recites the following (with key claim terms italicized):
A registration system for licensing execution of digital
data in a use mode,
said digital data executable on a platform,
said system including local licensee unique ID
generating means and remote licensee unique ID generating
means,
said system further including mode switching means
operable on said platform which permits use of said digital data
in said use mode on said platform only if a licensee unique ID
first generated by said local licensee unique ID generating
means has matched a licensee unique ID subsequently
generated by said remote licensee unique ID generating means;
and
wherein said remote licensee unique ID generating
means comprises software executed on a platform which
includes the algorithm utilized by said local licensee unique ID
generating means to produce said licensee unique ID.
As noted above, the inverition relies on a unique identifier that is associated with a
licensee as a means for controlling use of software by an intended licensee. In independent
claims 1, 19 and 20, this feature is expressed in the "licensee unique ID." According to the
'216 patent specification, the "code portion includes an algorithm adapted to generate a
registration number which is unique to an intending licensee of the digital data based on
information supplied by the licensee which characterizes the licensee." ('216 patent, 2:653:2, emphasis added.) The '216 specification further states that "[t]his information, unique to

Atty. Dkt. No. 2914.001REXO

UNI075104

RICHARDSON, ill.
Control No. 901010,831

- 20-

the user, is passed through a registration number algorithm 14 (represented symbolically in
FIG. 1) which generates a registration number or security key from the information unique to

the user." The '216 patent specification thus supports Uniloc's construction of "licensee
unique 10" as a unique identifier associated with a licensee.
Furthennore, the district court also construed Licensee uruque ID/Security Key,
Registration key, and Enabling key to mean "A unique identifier associated with a licensee."

Uni/oc USA, Inc. v. Microsoft Corp., 447 F.Supp. 2d 177, 183 (O.R.1. 2006). This district
court claim construction was later affirmed by the Federal Circuit and stated that the "district
court correctly construed the 'licensee unique 10' as a unique identifier associated with a
licensee that can be, but is not limited to, personally identifiable information about the
licensee or user." (See, Exhibit G, p. 12.) Therefore, the "licensee unique 10" must be a
unique identifier that is associated with an intended licensee.

The same is true for the

"security key" and "registration key" and "enabling key."

All of these tenns are

synonymous.
In rejecting claims 1, 19 and 20, the Office action states that "Hellman discloses a

system including local licensee unique 10 (see column 10, lines 14-18) and remote licensee
unique 10 generation (see column 6, line 62 to column 7, line 2.)" (Office action, p. 6.) For
the reasons discussed below, the Patent Owner respectfully disagrees.

(a)

Hellman Does Not Teach or Suggest the "Licensee Unique
ID" of Claim 1

As discussed above, the tenn "licensee unique 10" should be construed as "a unique
identifier associated with a licensee." 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.
With respect to the local licensee unique 10, the Office action points to Hellman's
cryptographic function generator 38 and its associated inputs.

It states that "Hellman

discloses a system including local licensee unique 10 (see column 10, lines 14-18.)" (Office
Action, p. 6.) For ease of reference, the cited portion of the Hellman specification for local
licensee unique 10 is shown below:
FIG. 7 depicts an implementation of the cryptographic check
unit 34. Signals representing K, N, R, and H are applied as
Atty. Okt. No. 2914.001REXO

UNI075105

- 21 -

RICHARDSON, III.
Control No. 901010,831

inputs to a cryptographic function generator 38 which generates
a check value C as an output signal.
With respect to the remote licensee unique ID, the Office. cites to Hellman's cryptographic
function generator 23 and its associated inputs, which are substantially identical to the inputs
to cryptographic function generator 38. Specifically, the Office Action states that Hellman
discloses "remote licensee unique ID generation (see column 6, line 62 to column 7, line 2.)"
For ease of reference, the cited portion of the Hellman specification for remote licensee
unique ID is shown below:
The signal H which is the output of the one-way hash function
generator 22 is applied as one of four input signals to
cryptographic function generator 23 to produce a signal
representing authorization A which is communicated to base
unit 12 over channel 11. The other three input signals to
generator 23 are R and N which were received over channel 11
from base unit 12 and SK which is obtained from authorization
and billing unit's table of serial numbers and secret keys.

However, as discussed next, 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.
Hellman discloses that on a local system a "base unit" that generates "a request for
software use," and then later verifies "the validity of the received authorization for additional
software use." (Hellman 8:62-9:2.) According to Hellman, the·"operation of the base unit 12
during verification of an authorization A to use a software package an additional number of
times" is shown in FIG. 6. (Hellman 9:16-18; FIG. 6.) As shown in FIG. 6, the "Crypto
Check Unit" accepts four inputs to generate an output that is compared to the received
authorization value "A" in order to validate the authorization value.

Atty. Dkt. No. 2914.00IREXO

UNI075106

RICHARDSON, III.
Control No. 901010,831

- 22-

CRYPTO

NH
12.

CHE:CK
UNIT

36

A

34

14

Hellman's FIG. 7 "depicts an implementation of the cryptographic check unit 34,"
where "[s]ignals representing K, N, R, and H are applied as inputs to a cryptographic function
generator 38 which generates a check value C as an output signal." (Hellman 10:14-18 and
FIG. 7 below.)

38

CRYPTOGRAPHIC
FUNCTION
·C

NtH
39

COMPARATOR

a
TO 36

SOFTWARE NAME
A

None of the inputs to the cryptographic function 38 is a unique identifier associated
with a licensee, as required by the claimed "licensee unique ID." (See, Rosenblatt,

~~41-47.)

For example, Hellman discloses that "the base unit 12 has a base unit key, K, stored in a
permanent memory 31, for example a PROM which is burned in during manufacture of the
base unit." (Hellman, 9:29-32.) Hellman further discloses that "where K and SK are equal to
one another," that "[i]n that case K must be stored in a secure memory, inaccessible to the
Atty. Dkt. No. 2914.001REXO

UNI075107

- 23-

RICHARDSON, m.
Control No. 901010,831

user," as "if the user can learn K, in this case he has learned SK, and he can generate
authorizations to himself to use any software package without paying for its use." (Hellman,
9:36-40.) Thus, K is a number associated with the base unit that is purposely withheld from
the user. (See, Rosenblatt,

~38.)

K is therefore not uniquely associated with an intended

licensee.
Nor are inputs H, R or H. Hellman discloses that the next input "N" is "the number of
additional uses of software requested." Like K, N is not uniquely associated with an intended
licensee. The next input "R" is "a random number." A random number is not uniquely
associated with an intended licensee. The next input "H" is "used as an 'abbreviation' or
name for describing the software package 21," where "any two software packages with the
same H value are considered equivalent." (Hellman, 5:65 - 6:45.) Input "H," like Nand R, is
also not uniquely associated with an intended licensee.
In sum, the signals representing K, N, R, and H are applied as inputs to cryptographic

function generator 38 which generates a check value C as an output signal. None of these
signals are uniquely associated with the licensee and the resulting value C therefore cannot be
equated to the claimed "licensee unique ID" of independent claim 1. (Rosenblatt Dec.,

~~36-

47.)
Hellman also discloses a remote system in its "authorization and billing unit for
generating an authorization for additional software use in the pay per use software control
system." (Hellman 5:3-6; Fig. 2.) However, this remote system also cannot be equated to the
means for generating a "licensee unique ID" for essentially the same reasons discussed above
with respect to the crypto check unit and the cryptographic function.

More specifically,

"[a]uthorization and billing unit 13 receives the signal representing the user originated
request for software use, generates a signal representing an authorization A for that particular
base unit 12 to use the software package 17 an additional N times, and communicates the
signal representing authorization A to base unit 12." (Hellman, 6:3-8.) "FIG. 2 depicts an
implementation of authorization and billing unit B."

(Hellman 6:16-17 and at Figure 2

below.)

Atty. Dkt. No. 2914.001REXO

UNI075108

- 24-

18

TABLE OF SER. NO'5
AND SECRET KEYS

RICHARDSON, III.
Control No. 90/010,831
19

PUBLIC
SEA. NO.

TABLE OF
SOFTWARE
SOFTWARE
. NAME

CRYPTOGRAPHIC

ONE WAY

FUNCTION

HASH

22

SOFTWARE
.....- - f PACKAGE

FUNCTION

21

Like the local version, Hellman uses four inputs to generate authorization signal "A"
in the remote cryptographic function generator 23. These four inputs consist ofH, R, N, and
SK, are also not uniquely associated with the intended licensee. Inputs H, R, and N are the
same as described above with respect to the local cryptographic function generator 38 and are
not uniquely associated with the licensee. The remaining input signal, SK, is "obtained from
authorization and billing unit's table of serial numbers and secret keys." (Hellman 7:1-2.)
SK is a base unit's secret key where "[a]uthorization and billing unit l3 contains a memory
18 having a table of serial numbers and secret keys which allows authorization and billing
unit l3 to determine a based unit's secret key, SK, from knowledge of the base unit's public
serial number." (See, Hellman 6:19-21.) (See, Rosenblatt Dec.,

~38.)

SK is therefore not

uniquely associated with an intended licensee.
In addition to the fact that none of the inputs to either of the cryptographic function
generators 38 an 23 are uniquely associated with an intended licensee, Hellman does not
teach that the respective authorization signals C and A are themselves unique values. The
only discussion of signals H, R, N, and K (or SK) having any type of unique value is where
Hellman states that "it is important to note that because no two users share the same secret
key ... it will not allow any other user to avoid payment for use of software." (See, Hellman
9:41-45.) But even assuming that SK (or K) is a unique value, SK (or K) is being used by
Hellman as the input key to the cryptographic function. See figure 4 below.

Atty. Dkt. No. 2914.001REXO

UNI075109

RICHARDSON, III.
Control No. 901010,831

- 25 -

H,R,N
'P'
SK

MODIFIED
'K'
DES

26

A

FIG_4
Hellman discloses that a "modified DES 26 would have the secret key SK as input to

its key port and H, R, and N would be the input to the plaintext port," and the "authorization
A would be

ob~ained

as the output of the ciphertext port." (See, Hellman 8:24-28, emphasis

added.) Thus, as known to one of ordinary skill in the art, a cryptographic function with nonunique inputs, even with a key that is unique, will not produce a unique output, represented as
"A" in figure 4. (See, Rosenblatt Dec.,

~~41-46.)

For all of these reasons, Hellman fails to

disclose a "licensee unique ID" as recited in claim 1.
As a final matter, Uniloc's position on Hellman was further substantiated by sworn
testimony given by the inventor himself, Professor Martin E. Hellman on March 31, 2009
during the Uniloc USA, Inc. et al. v. Microsoft Corp. Rhode Island District Court trial.
During trial Professor Hellman was questioned concerning his patent on whether he intended
to associate user information into the cryptographic function. In response, he admitted that
his patent failed to teach such a requirement of the claims in the '216 patent. (See Exhibit F
Trial Transcript, p. 61:17 - p. 62:4.) The pertinent portion of the transcript is shown below
for convenience as follows:
[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.
[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
Uniloc's position is thus supported by Hellman himself.
Atty. Dkt. No. 2914.001REXO

UNI075110

RICHARDSON, III.
Control No. 901010,831

- 26-

(b)

Grundy Does Not Cure the Deficiencies of Hellman with
Respect to Claim 1

Grundy does not cure the above noted deficiencies of Hellman. The Office action, in
rejecting independent claim 1, attempts to equate Grundy's "checksum" feature with the
claimed unique identifier that is associated with a licensee. However, Grundy's checksum
cannot meet these limitations as it cannot be equated to claim 1's "licensee unique ID." As
explained more fully below, Grundy's checksum is used for nothing more than verifying that
the licensee correctly entered data. It is not uniquely associated with any intended licensee
and cannot be used to identify any intended licensee.
More specifically, Grundy discloses an authorization process where "[t]o obtain the
authorization code, the new user will conduct, on the user's computer, a registration process."

(See, Grundy 4:59-60.)

Grundy further discloses the information contained within the

encrypted registration code as including "a user data cross-reference code [checksum], a
hardware identification code, an anti virus-checksum, and a previous Owner Identification
Number." (See, Grundy 15:7-10.) "The user data cross-reference code as extracted 309 is

the checksum originally calculated (505 FIG. 5) from the owner data as entered by the user
during the registration process." (See, Grundy 15:10-13, emphasis added.)
Once the registration code is generated, the "new user transmits the [encrypted]
registration code to the Central Authority," and "[alt the Central Authority, an authorization
process takes place."

(See, Grundy 5:3-5.)

This authorization includes decrypting and

unpacking the registration code into its component fields. (See, Grundy 15:4-6.)
It appears that the Office Action's characterization that the registration code is unique

is relying on improper speculation of what the reference may be teaching. The registration
code comprises non-unique components; indeed, Grundy makes no mention that these fields
are ever required or intended to be unique.

Furthermore, the registration code is not

"produced by performing a checksum of the user data component fields," as alleged by the
Office Action. Rather, the registration code is produced by encrypting mUltiple fields, of
which one of those fields is a checksum of user data, none of which produce a unique value.
The Office's interpretation of Grundy is thus incorrect.
Properly understood, Grundy discloses the use of checksums as a method of error
checking where a "second checksum based on the user data as entered via the input/output
device 16 by the Manufacture Control Agency operator is also Calculated 309."

(See,

Atty. Okt. No. 2914.001REXO

UNI075111

RICHARDSON, III.
Control No. 901010,831

- 27-

Grundy 15:10-16.) "The user data cross-reference code and the second checksum 309 are
compared 310," where "If these do not match it is an indication that the User Data as entered
by the Manufacture Control Agency operator 301 does not match the User Details as
originally entered by the new user at step 212." (See, Grundy 15:17-22, emphasis added.)
Thus, Grundy uses the checksum of the user data as an indicator that the user data has been
correctly entered. 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 intended registered user.
A person of ordinary skill in the art would understand "checksum" to represent a
small number of check digits that are typically appended to data in order to ensure the data's
integrity when it is stored or transmitted. To calculate a checksum of some data, the data is
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., a byte or C bytes) and appended to
the data before storage or transmission. Checksum algorithms used in practice are variations
on this scheme. 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. (See, Rosenblatt Dec.,

~52.)

A checksum is therefore 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. (See, Rosenblatt Dec., ~56.)
Therefore, a checksum cannot preserve the uniqueness of the input data.

Grundy

shows the input data to the 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.

A

checksum of this data would not preserve its uniqueness; many different sets of user data
could produce the same checksum. Therefore the checksum is not a generator of unique
identifiers. (See, Rosenblatt Dec.,

~62.)

Accordingly, Grundy does not cure the Examiner's

Atty. Dkt. No. 2914.001REXO

UNI075112

- 28-

RICHARDSON, III.
Control No. 90/010,831

alleged deficiencies of Hellman, and the two references cannot be used to establish a prima

facie case of obviousness.
As a final matter, the Office appears to agree with Uniloc's position. Specifically, in
its Decision Granting Ex Parte Examination, the Office acknowledges that "[c}hecksums are

not unique fields, even

if there [sic} are at least in part derived from unique data."

(Office

Action - Decision Granting Ex Parte Examination mailed April 9, 2010, p. 9; emphasis
added.) The Office's position on Grundy thus appears to be internally inconsistent.

(c)

Summary with respect to Hellman and Grundy with respect
to independent claim 1.

For one or more of the reasons detailed above, Hellman and Grundy, alone or in
combination, fail to teach each and every feature of independent claim 1. Thus, the Office
Action has failed to establish a prima facie case of obviousness for claim 1. Reconsideration
and withdrawal of the rejection is therefore respectfully requested.
Claims 2-11 depend from, directly or indirectly, independent claim 1. For at least the
above reasons and further in view of their own features, dependent claims 2-11 are also
patentable over the combination of Hellman and Grundy. Reconsideration and withdrawal of
the rejection is therefore respectfully requested.

2.

Independent Claim 19:

Independent claim 19 recites the following:
A remote registration station incorporating remote
licensee unique ID generating means,
said station forming part of a registration system for
licensing execution of digital data in a use mode,
said digital data executable on a platform, said system
including local licensee unique ID generating means,
said system further including mode switching means
operable on said platform which permits use of said digital data
in said use mode on said platform only if a licensee unique ID
generated by said local licensee unique ID generating means
has matched a licensee unique ID generated by said remote
licensee unique ID generating means; and
wherein said remote licensee unique ID generating
means comprises software executed on a platform which
includes the algorithm utilized by said local licensee unique ID
generating means to produce said licensee unique ID.
Atty. Dkt. No. 2914.001REXO

UNI075113

RICHARDSON, III.
Control No. 90/010,831

- 29-

The Office Action states that "Hellman discloses a system including local licensee
umque ID generation (see column 10, lines 14-18)," and "wherein said remote licensee
unique ID generation comprises software executed on a platform which includes the
algorithm utilized by said local licensee unique 10 generation to produce said licensee unique
10 (see column 10, lines 14-18.)"

(Office Action, p. 12.)

Patent Owner respectfully

disagrees. Referring to independent claim 19, Hellman does not teach or suggest a "licensee
unique ID." (See, Rosenblatt Dec., ,-r,-r41-46.)
Independent claim 19 is similar to independent claim I in that it also uses the term
"licensee unique ID" to refer to the unique identifier that is associated with an intended
licensee. Claim 19 differs in that it is claimed from the perspective of the remote registration
system. But this does not change its distinguishing features from those described above with
respect to independent claim 1.
(a)

Hellman Does Not Teach or Suggest the "Licensee Unique
ID" of Claim 19

As discussed above, the term "licensee unique 10" should be construed as "a unique
identifier associated with a licensee." 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.
As with independent claim 1, the Office action alleges that "Hellman discloses a
system including local licensee unique 10 (see column 10, lines 14-18.)" (Office Action, p.
12.) For ease of reference, the cited portion of the Hellman specification is shown below:

FIG. 7 depicts an implementation of the cryptographic check
unit 34. Signals representing K, N, R, and H are applied as
inputs to a cryptographic function generator 38 which generates
a check value C as an output signal.
For substantially the same reasons stated above with respect to claim I, Hellman fails to
disclose a licensee unique 10 because none of the inputs into cryptographic function
generator 38 (K, N, R and H) is associated with an intended licensee. (See, Rosenblatt Dec.,
,-r~36-47.)

Therefore, for the reasons previously discussed regarding claim 1, Hellman fails to

disclose the "licensee unique 10" recited in claim 19. (See, Rosenblatt Dec., ~,-r80-83.)

Atty. Dkt. No. 2914.001REXO

UNI075114

RICHARDSON, III.
Control No. 901010,831

- 30-

(b)

Grundy Does Not Cure the Deficiencies of Hellman with
Respect to Claim 19

Again, for substantially the same reasons discussed above with respect to claim 1,
Grundy does not cure the noted deficiencies in Hellman's disclosure.

As previously

discussed, a checksum cannot preserve the uniqueness of the input data and thus the
checksum is not a generator of unique identifiers. (See, Rosenblatt Dec., 62.) Accordingly,
as Grundy does not cure the Examiner's alleged deficiencies of Hellman, the references
cannot be used to establish a prima facie case of obviousness. For one or more of the reasons
detailed above, Hellman and Grundy, alone or in combination, fail to teach each and every
feature of independent claim 19. Thus, the Office Action has failed to establish a prima facie
case of obviousness for claim 19.

Reconsideration and withdrawal of the rejection is

therefore respectfully requested. (See, Rosenblatt Dec., 48-65.)

3.

Independent Claim 20:

Independent claim 20 recites the following:
A method of registration of digital data so as to enable
execution of said digital data in a use mode,
said method comprising an intending licensee operating
a registration system for licensing execution of digital data in a
use mode,
said digital data executable on a platform,
said system including local licensee unique ID
generating means and remote licensee unique ID generating
means,
said system further including mode switching means
operable on said platform which permits use of said digital data
in said use mode on said platform only if a licensee unique ID
generated by said local licensee unique ID generating means
has matched a licensee unique ID generated by said remote
licensee unique ID generating means; and
wherein said remote licensee unique ID generating
means comprises software executed on a platform which
includes the algorithm utilized by said local licensee unique ID
generating means to produce said licensee unique ID.
The Office Action states that Hellman discloses a "system including local licensee
unique ID generation (see column 10, lines 14-18)," and "wherein said remote licensee
Atty. Dkt. No. 2914.001REXO

UNI075115

RICHARDSON, III.
Control No. 90/010,831

- 31 -

ulllque ID generation compnses software executed on a platform which includes the
algorithm utilized by said local licensee unique ID generation to produce said licensee unique
ID (see column 10, lines 27-32.)"

(Office Action, p. 13.)

Patent Owner respectfully

disagrees. Referring to independent claim 20, Hellman does not teach or suggest a "licensee
unique ID." (See, Rosenblatt Dec.,

~~36-47.)

Independent claim 20 is similar to independent claim 1 in that it also uses the term
"licensee unique ID" to refer to the unique identifier that is associated with an intended
licensee. Claim 20 differs in that it is a method claim corresponding to independent claim 1.
But this does not change its distinguishing features from those described above with respect

to independent claim 1.

(a)

Hellman Does Not Teach or Suggest "Licensee Unique ID"
of Claim 20

As discussed above, the term "licensee unique ID" should be construed as "a unique
identifier associated with a licensee." 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.
As with independent claim 1, the Office action alleges that "Hellman discloses a
system including local licensee (see column 10, lines 14-18.)" (Office Action, p. 13.) For
ease of reference, the cited portion of the Hellman specification is shown below:
FIG. 7 depicts an implementation of the cryptographic check
unit 34. Signals representing K, N, R, and H are applied as
inputs to a cryptographic function generator 38 which generates
a check value C as an output signal.
For substantially the same reasons stated above with respect to claim 1, Hellman fails
to disclose a licensee unique ID because none of the inputs into cryptographic function
generator 38 (K, N, R and H) is associated with an intended licensee. (See, Rosenblatt Dec.,
~~36-4 7.)

Therefore, for the reasons previously discussed regarding claim 1, Hellman fails to

disclose the "licensee unique ID" as recited in claim 20. (See, Rosenblatt Dec.,

~~80-83.)

Atty. Dkt. No. 2914.001REXO

UNI075116

- 32-

RICHARDSON, III.
Control No. 901010,831

(b)
Grundy Does Not Cure the Deficiencies of Hellman with
Respect to Claim 20
Again, for substantially the same reasons discussed above with respect to claim I,
Grundy does not cure the noted deficiencies in Hellman's disclosure.

As previously

discussed, a checksum cannot preserve the uniqueness of the input data and thus the
,

checksum is not a generator of unique identifiers. (See, Rosenblatt Dec., 62.) Accordingly,
as Grundy does not cure the Examiner's alleged deficiencies of Hellman, the references
cannot be used to establish a prima facie case of obviousness. For one or more of the reasons
detailed above, Hellman and Grundy, alone or in combination, fail to teach each and every
feature of independent claim 20. Thus, the Office Action has failed to establish a prima facie
case of obviousness for claim 20.

Reconsideration and withdrawal of the rejection is

therefore respectfully requested. (See, Rosenblatt Dec., 48-65.)

C. Independent Claim 12:

Independent claim 12 recites the following:
A registration system attachable to software to be
protected,
said registration system 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; and
wherein said registration system is replicated at a
registration authority and used for the purposes of checking by
the registration authority that the information unique to the user
is correctly entered at the time that the security key is generated
by the registration system.
The Office Action states that "Hellman discloses a registration system generating a
security key from information input to said software (see column 10, lines 14-18 and 27-32.)"
(Office Action, pp. 8-9.) Patent Owner respectfully disagrees. Hellman does not teach or
suggest "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." (See, Rosenblatt Dec.,

~~66-71.)

Atty. Dkt. No. 2914.001REXO

UNI075117

RICHARDSON, III.
Control No. 90/010,831

- 33 -

1.

Hellman Does Not Teach or Suggest "Generating a Security Key" of
Claim 12

As discussed above with respect to the "licensee unique ID" term in independent
claims 1, 19 and 20, the term "Security' Key" in claim 12 should be construed as "a unique
identifier associated with a licensee." For substantially the same reasons discussed above
with respect to the "licensee unique ID" term in claim I, 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. (See, Rosenblatt Dec.,

~~36-47.)

Indeed, the Office action

admits that Hellman "does not disclose that the information input for the security key to said
software uniquely identifies an intended registered user of said software on a computer on
which said software is to be installed." (See, Rosenblatt Dec.,

~66.)

Therefore, there is no

dispute that Hellman fails to disclose generating a security key, as recited in claim 12.

2.

Grundy Does Not Cure the Deficiencies of Hellman with Respect to
Claim 12

The Office action relies on Grundy to teach the claimed "security key." Specifically,
the Office action alleges that Grundy "discloses the generation of a checksum, which is used
as a security key that is derived at least in part from the user data."
But as fully discussed above with respect to independent claim 1, a checksum is not
unique and therefore cannot be a unique identifier associated with a licensee. Specifically,
Grundy is not using the checksum to represent a security key, but rather uses the checksum of
the user data as an indicator that the user data has been correctly entered. Grundy does not
teach or suggest that the checksum represents a unique identifier of an intended registered
user. Accordingly, as Grundy does not cure the Examiner's alleged deficiencies of Hellman,
the references cannot be used to establish a prima facie case of obviousness.
For one or more of the reasons detailed above, Hellman and Grundy, alone or in
combination, fail to teach each and every feature of independent claim 12. Thus, the Office
Action has failed to establish a prima facie case· of obviousness for claim 12.
Reconsideration and withdrawal of the rejection is therefore respectfully requested.
Rosenblatt Dec.,

~~66-71.)

(See,

Claims 13-16 depend from, directly or indirectly, independent

claim 12. For at least the above reasons and further in view of their own features, dependent

Atty. Dkt. No. 2914.001REXO

UNI075118

- 34-

RICHARDSON, III.
Control No". 901010,831

claims 13-16 are also patentable over the combination of Hellman and Grundy.
Reconsideration and withdrawal ofthe rejection is therefore respectfully requested.

D. Independent Claim 17:
Independent claim 17 recites the following:
A method of control of distribution of software,
said method comprising providing mode-switching
means associated with said software adapted to switch said
software between a fully enabled mode and a partly enabled or
demonstration mode,
said method further comprising providing registration
key generating means adapted to generate a registration key
which is a function of infonnation unique to an intending user
of the software;
said mode-switching means switching said software into
fully enabled mode only if an enabling key provided to said
mode-switching means by said intending user at the time of
registration of said software has matched identically with said
registration key; and
wherein said enabling key is communicated to said
intending user at the time of registration of said software; said
enabling key generated by a third party means of operation of a
duplicate copy of said registration key generating means.
The Office Action states, regarding claim 17, that Hellman discloses a "method
further comprising providing registration key generation" and where "said enabling key
generated by a third party means of operation of a duplicate copy of said registration key
generation (generated by Authorization and Billing Unit, see column 6, lines 3-8.)" (Office
Action, p. 11.) Patent Owner respectfully disagrees. Hellman does not teach or suggest a
"method further comprising providing registration key generating means adapted t<:> generate
a registration key which is a function of infonnation unique to an intending user of the
software." (See, Rosenplatt Dec., ~~72-79.)

1.

Hellman Does Not Teach or Suggest "Generating a Registration
Key" of Claim 17

As discussed above, with respect to the "licensee unique ID" tenn in independent
claims 1, 19 and 20, the tenn "Registration Key" in claim 17 should be construed as "a
unique identifier associated with a licensee." For substantially the same reasons discussed
Atty. Dkt. No. 2914.001REXO

UNI075119

RICHARDSON, III."
Control No. 901010,831

- 35-

above with respect to the "licensee unique ID" term in 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. (See, Rosenblatt Dec.,

~~41-46.)

Indeed, the Office

action admits that "Hellman's registration key generation is not a function of information
unique to an intending user of the software." (See, Rosenblatt Dec.,

~72.)

Therefore, there is

no dispute that Hellman fails to disclose generating a registration key, as recited in claim 17.

2.

Grundy Does Not Cure the Deficiencies of Hellman with Respect to
Claim 17

The Office action relies on Grundy to teach the claimed "registration key."
Specifically, the .Office action alleges that Grundy "discloses the generation of a checksum,
which is used as a registration key, that is derived at least in part from the user data." (See,
Office Action page 11.)
But as fully discussed above with respect to independent claim 1, a checksum is not
unique and therefore cannot be a unique identifier associated with a licensee. Specifically,
Grundy is not using the checksum to represent a security key, but rather uses the checksum of
the user data as an indicator that the user data has been correctly entered. Grundy does not
teach or suggest that the checksum -represents a unique identifier of an intended registered
user. Accordingly, as Grundy does not cure the Examiner's alleged deficiencies of Hellman,
the references cannot be used to establish a prima facie case of obviousness.
For one or more of the reasons detailed above, Hellman and Grundy, alone or in
combination, fail to teach each and every feature of independent claim 17. Thus, the Office
Action has failed to establish a prima facie case of obviousness for claim 17.
Reconsideration and withdrawal of the rejection is therefore respectfully requested. (See,
Rosenblatt Dec.,

~~72-79.)

Claim 18 depends from independent claim 17. For at least the

above reasons and further in view of its own features, dependent claim 18 is also patentable
over the combination of Hellman and Grundy.

Reconsideration and withdrawal of the

rejection is therefore respectfully requested.

Atty. Dkt. No. 2914.001REXO

UNI075120

RICHARDSON, III.
Control No. 901010,831

- 36-

v.

OBJECTIVE INDICIA OF NON-OBVIOUSNESS

Uniloc has articulated numerous technical arguments why claims 1-20 are not obvious
over Hellman in view of Grundy.

In addition to these technical arguments, there is

substantial evidence of other objective indicia, i.e., secondary considerations, that weigh
against any finding of obviousness under 35 U.S.C. § 103(a). Though not necessary where,
as here, no prima facie case has been established, such secondary indicia are "essential
components of the obviousness determination." In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998.) These considerations "may be highly probative, as they are 'tributes to ingenuity.'"
Arlde Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 957 (Fed. Cir. 1997).

As

provided in MPEP § 2145, "[o]ffice personnel should consider all rebuttal arguments and
evidence presented by applicants,"

including

evidence relating to the

secondary

considerations as set forth in Graham v. John Deere Co., 383 U.S. 1 (1966). These objective
indicia include commercial success and licensing of others to use the patented inventions.
Here, evidence related to secondary considerations weighs against any finding of obviousness
of the claimed inventions.
The commercial success of an invention is evidence of its non-obviousness.
Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944); AI-Site Corp. v.
VSIInt'l, Inc., 174 F.3d 1308, 1325-26 (Fed. Cir. 1999.) Other secondary indicia of nonobviousness include copying and praise. Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d
1087, 1092 (Fed. Cir. 1987.) A nexus is required between the secondary considerations and
the claimed features. Simmons Fastener Corp. v. Ill. Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984.) The term "nexus" designates a factually and legally sufficient connection
between the objective evidence of non-obviousness and the claimed invention so that the
evidence is of probative value in the determination of non-obviousness. Demaco Corp. v. F.
Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988.) Secondary indicia of
non-obviousness are not just a cumulative or confirmatory part of the obviousness calculus,
but constitute independent evidence of non-obviousness.

Ortho-McNeill Pharm., Inc. v.

Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008.) Courts are obligated to consider
objective evidence of non-obviousness when such evidence is present. Knoll Pharm. Co. v.
Teva Pharms, USA, Inc., 367 F.3d 1381, 1385 (Fed. Cir. 2004); Custom Accessories, Inc. v.
Jeffrey-Allan Indus., Inc., 807 F.2d 955, 960-61 (Fed. Cir. 1986.)
Atty. Dkt. No. 2914.001REXO

UNI075121

- 37-

RICHARDSON, ill.
Control No. 90/010,831

Uniloc designs systems and software that include the claimed subject matter of the
'216 patent. Uniloc sells and distributes such software. Uniloc also licenses its intellectual
property and patents, including the '216 patent,.to other companies for manufacture and sale
of various commercial products. As explained more fully below, products incorporating the
claimed subject matter of the '216 patent have enjoyed commercial success, either by Uniloc
directly or through its licensees. All these factors point to the commercial success and other
secondary indicia that weigh against the allegation that the claimed inventions in the '216
patent are obvious.

A. Commercial Success

Uniloc's software activation technology has achieved substantial commercial success.
Since 1993, Uniloc's software activation based product sales and licensing have grown
significantly. All of these sales involved products and services that incorporated Uniloc's
proprietary software activation technology covered in the claims of the '216 patent. (See,
Davis Dec.,

~~9-12.)

For instance, since its founding, Uniloc has developed software products, including
SoftAnchor, which incorporate the '216 patented technology. Uniloc, through its SoftAnchor
product, provides a full range of turn-key software activation development kits and serverside software. Clients, such as third party software publishers, license and use SoftAnchor to
implement and manage software activation copy control systems. (See, Davis Dec.,

~11.)

Uniloc also developed and sells an additional software product, NetAnchor, that
leverages the Uniloc technology platform to protect critical infrastructure networks.
NetAnchor also incorporates the '216 patented technology to secure its own authorization
server software. (See, Davis Dec.,

~12.)

Further, in July 2010, Uniloc spun off a product

division called BlueCava that focuses on online fraud and online marketing.

(See, Davis

Dec., ~13.)

B. The Uniloc '216 Patent Has Been and Continues to Be Extensively Licensed

In addition to the commercial success noted above, Uniloc has extensively licensed

the '216 patent. The first major license secured by Uniloc Australia for its '216 patented
Atty. Dkt. No. 2914.001REXO

UNI075122

- 38-

RICHARDSON, III.
Control No. 90/010,831

software activation system was with mM Australia in 1993. The Uniloc software activation
system subsequently became the underlying technology for the mM CD Showcase software
distribution program launched by mM USA in 1993. (See, Davis Dec.,

~16.)

Between the

mM CD Showcase program and other Uniloc licensing efforts, Uniloc has licensed the '216
patented technology directly, or indirectly, to hundreds of software publishers. (See, Davis
Dec.,

~17.)

C. Uniloc's Technology and Inventions Have Been Praised by Others
The Uniloc SoftAnchor product was recognized as a Software & Information Industry
Association (SUA) eODiE Award Finalist in 2007 and again in 2009. The eODiE awards
are annual awards for excellence in software development within the software industry. (See,
Davis Dec.,

~14.)

Further, the Uniloc NetAnchor product was named "Best New or Updated

ITS Industry Product" by the Intelligent Transportation Society of America ("ITSA") in
2008. Uniloc was also named by the ITSA as an "Emerging Vendor" in response to the
NetAnchor product in 2008. (See, Davis Dec.,

~15.)

D. The '216 Patented Technology Meets a Long-Felt Need
Prior to the introduction of the '216 software activation solution to the software
publishing market, unauthorized copying of software, or "software piracy," was a very
significant problem. The advent of the Internet, enabling peer-:-to-peer sharing of software,
turned the problem of casual copying into a crisis for software publishers. A letter widely
published on the Internet from Bill Gates in 1976, addressed to hobbyists, expressed Mr.
Gates concern that a majority of the hobbyist audience stole the software that they used.
Twenty years later, circa 1996, research by the Business Software Alliance ("BSA") found
that about $15 billion in software was stolen each year. According to trial exhibits in the
district court case, Microsoft internal documents estimated that the company believed it was
losing over 50% worldwide software revenue due to the piracy problem in approximately

1997. (See, Davis Dec.,

~18.)

Atty. Dkt. No. 2914.001REXO

UNI075123

- 39-

RICHARDSON, III.
Control No. 901010,831

E. A Nexus Exists Between the Commercial Success of Uniloc's Software
Activation and Fraud Prevention Solutions and the Claims of the '216 Patent

Both the SoftAnchor and NetAnchor products incorporate the design of a unique
identifier associated with a licensee, such as the "licensee unique ID," of claim 1, 19 amd 20
in the '216 patent. The licensee unique ID is generated in the SoftAnchor and Net Anchor
products, based on a unique serial number, or product key, that is assigned to each copy of
the software when it is shipped.

Each unique identifying number is associated with the

purchaser of each copy of the software, which mayor may not be combined with parameters
about the end user's computer on which the software is to be loaded and executed. (See,
Davis Dec.,

~19.)

F. Conclusion with Respect to Secondary Indicia of Non-Obviousness

The '216 patent is embodied in Uniloc's software activation and fraud prevention
products. Products incorporating the claimed subject matter of the '216 patent have enjoyed
commercial success. The' 216 patent has also been extensively licensed. There is a nexus
between the secondary indicia and the claims of the '216 patent. Therefore, in addition to the
technical differences presented above in Section IV, the secondary indicia of nonobviousness presented above weigh against the asserted obviousness rejections.

For this

additional reason, Patent Owner respectfully requests that the Examiner reconsider and
withdraw the Section 103 rejection of claims 1-20.

Atty. Dkt. No. 2914.001REXO

UNI075124

- 40-

RICHARDSON, III.
Control No. 90/010,831

Conclusion
All of the stated grounds of objection and rejection have been properly traversed,
accommodated, or rendered moot.

Patent Owner therefore respectfully requests that the

Examiner reconsider all presently outstanding objections and rejections and that they be
withdrawn.

Patent Owner believes that a full and complete reply has been made to the

outstanding Office Action and, as such, the present application is in condition for allowance.
If the Examiner believes, for any reason, that personal communication will expedite
prosecution of this application, the Examiner is invited to telephone the undersigned at the
number provided.
Prompt and favorable consideration of this Reply is respectfully requested .
. Respectfully submitted,

~4:]:TErn & Fox

PL.L.C.

Robert Greene Sterne
Attorney for Patent Owner
Registration No. 28,912

0Cv-2<i;L\

Jon E. Wright
Attorney for Patent Owner
~n No. 50,720

~~7;;;S:-Robert W. Molitors
Attorney for Patent Owner
Registration No. 66,726

Date: November 29.2010
1100 New York Avenue, N.W.
Washington, D.C. 20005-3934
[phone]

Atty. Dkt. No. 2914.001REXO

UNI075125