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 7

Control No.
901010,831

Ex Parte Reexamination Interview Summary

Patent Under Reexamination
5,490,216

r=Ex-a-m~i~ne-r------------~A~rt~U~n~it-----r----------~

3992

MATIHEW HENEGHAN

All participants (USPTO personnel, patent owner, patent owner's representative):
(1) MATTHEW HENEGHAN

(3) Minh Dinh Nguyen

(2) Alex Kosowski

(4) 8 others. see Exhibit. p. 3.

Date of Interview: 17 November 2010
Type: a)O Telephonic b)O Video Conference
c)~ Personal (copy given to: 1)0 patent owner
Exhibit shown or demonstration conducted: d)~ Yes
If Yes, brief description: Powerpoint Presentation

2)0 patent owner's representative)
e)O· No.

Agreement with respect to the claims f)0 was reached. g)~ was not reached. h)O N/A.
Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to ... "
Claim(s) discussed: 1-20.
Identification of prior art discussed: Hellman. Grundy.
Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
The Patent Owner argued that some limitations of the claims were not met by the cited art and that obviousness could
. be overcome in view of secondary considerations: No agreement was reached. See attachment.
(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
patentable, if available, must be attached. Also, where no copy of the amendments that would render the claims
patentable is available, a summary thereof must be attached.)

A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER'S
STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281). IF A RESPONSE TO THE
LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM THIS
INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
(37 CFR 1.S60(b». THE REQUIREMENT FOR PATENT OWNER'S STATEMENT CAN NOT BE WAIVED.
EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).

!Matthew Heneghan!
USPTO AU 3992
cc: Requester (if third party requester)
u.s. Patent and Trademark Office
PTOL-474 (Rev. 04-01)

Ex Parte Reexamination Interview Summary

PaperNo. 20101118

UNI075036

~Sterne Kessler
Goldstein Fox
AHORNE YS AT LAW

Reasons Why Claims Should be
Confirmed

. • Key claim elements not taught or suggested by
the alleged SNQ:
• Generating a Licensee Unique 10 based on
information unique to the user
• Grundy is improperly used for the purpose of
generating a Unique ID in original prosecution
and therefore cannot be used in a SNQ during
reexamination

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2010 Sterne. Kessler. Goldslein. & Fox P.lLC. Aft Righls Reserved.

(SJ,Sterne Kessler

Goldstein fox
I\TiORNEYS AT LAW

Key Claim Terms - Intrinsic Evidence
"Licensee Unique ID/Security Key/Registration
Key/Enabling Key" .

-"It is the algorithm embedded within the code portion (and which is duplicated at
the remote location) which provides a registration number which can be 'unique'
if the information provided by the intending licensee upon which the algorithm
relies when executed upon the platform is itself 'unique.'" ('216 patent, 3:11-16
and 6:16-21)

"'"

-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, 2:65 - 3:2).
.
-It is the algorithm embedded within the code portion (and which is duplicated at
the remote location) which provides a registration number which can be "unique"
if the information provided by the intending licensee upon which the algorithm
relies when executed upon the platform is itself "unique ll •
('216 patent, 6:17-22 and 3:11-17).
-This information, unique to 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 together with the
serial number previously generated. ('216 patent, 7:14-19). .
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(SJ.Sferne Kessler
Goldstein Fox
ATTORM.Y~

Af lAW

Hellman Does Not Disclose a Licensee
Unique 10 (as testified at trial by Professor Hellman)

/

liThe Hellman patent, however, does not use a product key or any other "nonplatform-related" user information to create a licensee unique ID .... Hellman
(the person) admitted - after repeatedly being impeached with his deposition
testimony - that his patent failed to teach this requirement of the claims."
(Yellow Brief - Uniloc USA v. Microsoft, Case No. 2010-1035-1055 (Fed. Cir.), p. 57)

[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
(March 31, 2009 Trial Transcript: p.61, II. 17 - p 62, II. 4, Uniloc USA, Inc. et al. v. Microsoft Corp.,
C.A. No. 03-440 (O.R.I.»

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€I 2010 Sterne, Kessler. Goldstein. & Fox puc. All Righls Reserved.

(SJ,Sferne Kessler
Goldstein Fox
AfTORNEYS Af LAW

Hellman Does Not Disclose a Licensee
Unique 10

-K is a base unit identifying key
stored in permanent memory,
inaccessible by the user
-N is the number of software
uses being requested
-R is a random number
-H is a value that identifies the
name of the software package
being requested

c

-None of the above are
associated with the licensee·
(as admitted by Hellman at
trial)

38

CRYPTOGRAPHIC
FUNCTION

NtH

3t--J COMPARAlOR

.

a

t::-;: TO 36

~WARENAM£

FIG_7·

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~2010 Sterne.

Kessler. GoIds1ein. & Fax P.LLC All Rights ReseJVed .

CSlSterne Kessler
Goldstein Fox
ATTORNEYS AT LAW

Hellman Does Not Disclose Local
Licensee Unigue ID

K, N, R, and Hare used to
generate C. However C is not
disclosed to be a unique 10
associated with a user.
Therefore C is not a "licensee
unique ID" as recited in claims 1,
19 and 20. Nor is C "a security
key [generated] from information
input to said software which
uniquely identifies an intended
registered user" as recited in·
claim 12, nor is C "a registration
key which is a function of
information unique to an
intending user of the software"
as recited in claim 17.
c

12

14-

FIG_6
38

CRYPTOGRAPHIC
FUNCTION

c
NtH

39

COMPARATOR

a

t-- TO 36
SOFTWARE NAME

A

FIG_7

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Sterne, Kessler, Goldstein, & Fox P.l.cc. All Rights Resel\'ed.