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 5

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COl\'1MERCE
United States Patent and Trademark Office
Addre.<s: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313·1450

WWW.USplO.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

901010,831

OinmolO

5,490,216

29 14.00 1REXO

2214

26111

7590

EXAMINER

08/05nOlI

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.c.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005

ART UNIT

PAPER NUMBER

DATE MAILED: 08/05nOIl

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10103)

UNI076148

Control No.
901010,831

5,490,216

Examiner

Art Unit

MATIHEW HENEGHAN

Notice of Intent to Issue
Ex Parte Reexamination Certificate

Patent Under Reexamination

3992

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --

1. [8] Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
issued in view of
(a) [8] Patent owner's communication(s) filed: 18 March 2011.
(b) D Patent owner's late response filed: _ _ .
(c) D Patent owner's failure to file an appropriate response to the Office action mailed: _ _ .
(d) D Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31) ..
(e) D Other: _ _
Status of Ex Parte Reexamination:
(t) Change in the Specification: DYes [8] No
DYes [8] No
(g) Change in the Drawing(s):
(h) Status of the Claim(s):
(1) Patent claim(s) confirmed: 1-20.
(2) Patent claim(s) amended (including dependent on amended claim(s)): _ _
(3) Patent claim(s) canceled: _ _ .
(4) Newly presented claim(s) patentable: _ _ .
(5) Newly presented canceled claims: _ _ .
(6) Patent claim(s) D previously D currently disclaimed: _ _

(7) Patent claim(s) not subject to reexamination: _ _ .

2. [8] Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for
Patentability and/or Confirmation."
3. [8] Note attached NOTICE OF REFERENCES CITED (PTO-S92).
4. D Note attached LIST OF REFERENCES CITED (PTO/SB/OS or PTO/S8/DB substitute).
5. D The drawing correction request filed on _ _ is:

D approved

D disapproved.

6. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (t).
a)D All b)D Some·
c)D None
of the certified copies have
D been received.
D not been received.
D been filed in Application No. _ _ .
D been filed in reexamination Control No. _ _.
D been received by the International Bureau in PCT Application No. _ _ .
• Certified copies not received: _ _ .
7. D Note attached Examiner's Amendment.
S. D Note attached Interview Summary (PT0-474).

9. D Other:_--,-

cc: Requester (if third party requester)

u.s. Patent and Trademark Office
PTOL-469 (Rev. 05-10)

Notice of Intent to Issue Ex Parte Reexamination Certificate

Part of Paper No 20110711

UNI076150

Application/Control Number: 90/010,831

Page 5

Art Unit: 3992
STATEMENT OF REASONS FOR PATENTABILITY ANDIOR CONFIRMATION
The following is an examiner's statement of reasons for patentability and/or
confirmation of the claims found patentable in this reexamination proceeding:

During reexamination, claims are given the broadest reasonable interpretation
consistent with the specification and limitations in the specification are not read into the
claims (In re Yamamoto, 740 F.2d 1569,222 USPQ 934 (Fed. Cir. 1984)). Where there
.,
exists a final decision by the Court of Appeals for the Federal Circuit regarding the
construction of claims, an interpretation is not reasonable where it is inconsistent with
that decision. The Patent Owner has persuasively argued that, based on such decisions
regarding the '216 patent, Hellman cannot be reasonably construed as teaching to a
local licensee unique 10 generating means or a remote licensee unique 10 generating
means.
The licensee unique 10 generated by the means recited in each of the claims
must be derived from at least piece of information that is specific to the user, such as
name, billing information, or product information unique to the instantiation entered by
the user. The information cannot be specific to the computer or independently
generated by the computer. Hellman's 10 has four inputs: a computer-specific key (SK),
a number of uses requested (N), a random number generated by the computer (R), and
a hash of a code for the type of software package, which is general to all installations of
that package (H). Since none of these are user-specific, Hellman's algorithm does not
. generated the claimed licensee unique 10.

UNI076154

Page 6

Application/Control Number: 90/010,831
Art Unit: 3992

It is also noted that the means itself must be an algorithm that, at least to some
extent, must comprise a summation. The means provided by Hellman for combining the
fields is DES, an encryption algorithm that does not involve summation; alternatively,
Hellman suggests that digital signatures may be used (see Hellman, column 11, lines
42-47). Hellman further stresses that faster cryptographic alternatives could also be
used (see column 7, line 67 to column 8, line 12). Given that there were a finite number
of such algorithms available at the time of the Patent Owner's invention, it would have
been obvious at that time to try any recognized alternative in the implementation of
Hellman. As the Federal Circuit has pointed out, the MD5 algorithm (described in RFC
1321, attached to this action) could be such a means.

one.

Of the other art of record, the only1
that suggests that use of user-specific
information in the computation of fields is Grundy. The Patent Owner has persuasively
argued that the summation disclosed by Grundy is used in the context of merely
verifying the correctness of information related to the user and is not being used to
generate an 10 per se. Since the information is not being used for the same purpose,
one skilled in the art therefore would not use the algorithm of Grundy as part of the
generation of the claimed licensee unique 10.

Any comments considered necessary by PATENT OWNER regarding the above
statement must be submitted promptly to avoid processing delays. Such submission by
the patent owner should be labeled: "Comments on Statement of Reasons for
Patentability and/or Confirmation" and will be placed in the reexamination file.

UNI076155