Uniloc microsoft f.3d

Compare ' patent, col. Klausner about MD5, "[i]t does a number of other operations, what are called logical operations in mathematics". The real inquiry, then, is whether based on this evidence the jury could have reasonably found MD5 equivalent because it performs some form of addition, in addition to its other operations. See Ishida Co.

Taylor, F. Storage Tech. The unequivocal answer is no. A simple comparison of MD5 as a whole to the algorithm Uniloc's patent discloses clearly reveals non-equivalence. While the existence of additional components or different steps does not per se preclude a structure from being considered substantially the same as another structure, the various non-additive mathematical operations in MD5 demonstrate significant and undisputed differences between MD5 and the summation algorithm in the ' patent, which cannot be overstated.

For example, the compressive, circular shifting and mixing functions fundamentally create a more secure result compared to an algorithm based in summation as the specification discloses.

Indeed, the unchallenged evidence was that MD5's hallmark is the variety of its logical and mathematical steps to obtain a more secure result.

This complexity highlights the advantage of an irreversible one-way function with a fixed output, instead of an algorithm that uses a single type of reversible operation with no fixed output , such as that disclosed in the patent. See Business Objects, S. Microstrategy, Inc. By design, MD5 achieves its function in a way an algorithm based in summation could not. The two are hardly interchangeable, and the record does not support finding otherwise.

See Multiform Desiccants, Inc. Medzam, Ltd. Uniloc, of course, offers a different view. It highlights Mr. Klausner's description, the MD5 and SHA-1 source code that "demonstrates [they] perform summation" and documents it says amount to admissions by Microsoft, which alone provide substantial evidence upon which the jury could have relied. There is no question Mr. Klausner provided evidence that among other things, MD5 and SHA-1 perform some addition and multiplication.

A few lines in the multiple pages of single space computer code pertaining to a single mathematical aspect of an extremely complex algorithm cannot overcome Dr. Wallach's unrebutted and complete description that revealed the true complexity of the entire operation.

See Trial Ex. The skeletal disclosure in the ' patent with three plus signs and the phrases "by addition" and "items to be summed" cannot be so broad as to capture within its scope to one of ordinary skill in the art virtually any and all software algorithms that include addition as one mathematical component, no matter how minor.

This, in turn, would impermissibly broaden the scope of Claim Harley-Davidson, Inc. AWH Corp. Finally, the documents on which Uniloc so heavily relies Trial Ex. In general, these documents all contain statements that more or less relate the MD5 or checksums or hashes to summation. This documentary evidence suffers from the same infirmities as Mr. Klausner's MD5 testimony. Uniloc's approach, both to the jury and now the Court, is to boil down complex computer software programs to a kind of generic word find puzzle, that ignores how the allegedly infringing system actually works and, most important, the actual disclosure in the ' patent.

This is undisputed. But the fact that the word "hash" or the phrase "hash total" appears in the same sentence as "addition" in documents unrelated to PA is beside the point in the overall picture of what the evidence showed the complex hashes in this case actually do, and whether that is equivalent to the "by addition" structure Uniloc disclosed.

Moreover, while the Court disagrees with Microsoft that the Federal Circuit's holding in Centricut alone disposes of the issue, Uniloc's failure to proffer an expert opinion or any testimony for that matter in support of its interpretation of these technically nuanced documents adds yet another layer of deficiency. See Centricut, LLC.

Esab Group, Inc. Computer Sys. Cypress Semiconductor Corp. The Court has reviewed the transcripts and evidence with painstaking detail in the light most favorable to Uniloc, careful not to act as the eleventh juror. What remains is a firm belief indeed a certitude that the jury "lacked a grasp of the issues before it" and reached a finding without a legally sufficient basis.

Texas Instruments, 90 F. Consequently, because it does not practice each limitation of Claim 19, Microsoft's PA does not infringe as a matter of law. Having reached the conclusion that there is no infringement as a matter of law, the Court could stop and say no more.

The Court will move on to address the final non-infringement controversy, however, because it too provides an independent basis for JMOL. Microsoft's last salvo on infringement involves an issue it debuted at summary judgment. It deals with when licensing occurs for its accused products and the relationship or lack thereof between licensing and PA, as it compares to what is called for in the ' patent. The term registration system was construed as "a system that allows digital data or software to run in a use mode on a platform if and only if an appropriate licensing procedure has been followed.

Thus, while the PA system depicted in the diagram below may attempt to "catch" non-compliant licensees who violate restrictions in the EULA, it does nothing by itself to create any legal relationship which allows the previously unlicensed user to use Microsoft's software. Uniloc says this is nonsense, but has never been able to clearly articulate why.

Some of Uniloc's difficulty here could be due to its confusion between the EULA and what Microsoft calls the digital license created at the Clearinghouse. See Pl. Even now, however, with the EULA front and center, the parties talk past each other. Uniloc continues to harp on evidence that shows that upon a match on the local side of the digital license in PA, the user is allowed to go from a demonstration mode to "typical" or "normal" use.

To this day, it fails to explain why the undisputed grace period restrictions cannot allow for use in accordance with the provisions of the previously-accepted EULA, which informs licensees that their rights are limited and ultimately subject to the condition of activating the software for long term use. This is the wrong question. A layperson sense of typical or normal use of Office or Windows "irrespective" of the legal license is arbitrary and irrelevant.

Actually, I'm still using Microsoft Office from So I've been using it for 12 years. Indeed, under Uniloc's interpretation, Microsoft's customers would never achieve this fictional status of full or maximum use because the EULA prohibits licensees from doing all sorts of things even after activation, such as disassembling software or installing it on more than the specified number of computers.

B-5 and C The point is that before a user can do anything with the software he must agree to the terms of the EULA; once this is done, the user becomes a licensee, and can use the software in accordance with the terms of the license, and with the provided functionality, until and unless the licensee activates through PA.

And this grace period functionality is not trivial. For example, Office XP limits the licensee to 50 boots, and the product functions with all of its features during this time the evidence was that on the 51st try, if the user does not activate most features become disabled. But if a user were to install the software, agree to the EULA and then not close the software for six months, it would function fully for that period of time, and have 49 boots remaining.

This is clearly much more than a frisbee. The long and short of it is this: as a matter of law, PA cannot be a registration system with mode switching means as that term has been construed. Uniloc deems this conclusion a hypertechnical trap contrived by Microsoft. It is undisputed that licensing of Microsoft's accused products takes place separate from and before activation.

The invention in the ' patent calls first for the exchange of communication with an intending licensee, and then and only then provides a "permit to licensed operation" of software if and only if the procedure is followed.

Besides simply saying it ain't so, Uniloc offers no principled argument as to why this difference in the two systems should not be dispositive of non-infringement on the question of Claim 19's "registration system" with "mode switching means.

Microsoft argues that even if the infringement verdict survives, Uniloc failed to meet its burden on willfulness. Proof of willful infringement requires at least a showing of objective recklessness. In re Seagate Tech. If this showing is made, a patentee "must also demonstrate that this objectively-defined risk determined by the record developed in the infringement proceeding was either known or so obvious that it should have been known to the accused infringer.

This is a fact question Uniloc must prove by clear and convincing evidence. See Comark Commc'ns, Inc. Harris Corp. For starters, Microsoft's litigation conduct cannot meet Seagate's threshold objective component. Uniloc's chief argument is that Microsoft recognized this Court's summary judgment "same algorithm" error in but stayed silent to reap the benefits of infringement pending appeal. But no reasonable jury could find this conduct reckless. Microsoft made a tactical decision to concede a factual error at the appropriate time, Uniloc USA, Fed.

In any event, for its part, Uniloc never moved for reconsideration and had the Court denied summary judgment it still would have been a close call.

Uniloc's only other plea on the issue of objective high risk is also without merit. Microsoft's reliance on a piece of prior art Wolfe cited during prosecution does not per se signal a baseless invalidity defense, especially where it was secondary to a primary reference Hellman that was never cited.

Of course, relevant to Seagate's first prong is the entire course of this litigation, which at first Uniloc hoped to dodge. This is hardly the stuff of which objectively reckless unreasonable conduct is made. See Cohesive Techs. Waters Corp. Robert Bosch Tool Corp. Given the dearth of clear and convincing evidentiary support under Seagate's first prong, it is doubtful the Court needs to reach the second.

See DePuy Spine, Inc. The Court will nevertheless examine Microsoft's subjective knowledge and supposed copying because the issues are relevant to the new trial request.

Uniloc says it proved by clear and convincing evidence Microsoft knew or should have known about the likelihood of infringement because it knew about and copied Mr. Richardson's invention. On the trial record no reasonable jury could reach this conclusion. Uniloc first notes its evidence that Mr. Richardson provided his "concept" to Microsoft for evaluation in , subject to a non-disclosure agreement specifying that "certain elements" were the "subject of a patent application.

See State Indus. Smith Corp. What the scope of claims in patents that do issue will be is something totally unforeseeable. Int'l, Inc. The publication point is a non-starter; if this was enough, every accused infringer with an internet connection or Washington D. The needle-in-a-haystack Larsson theory cannot even partly justify the jury's finding, because it is undisputed that the early versions of PA were completed in and before Microsoft supposedly learned of the invention by way of the citation.

See Honeywell Int'l Inc. Universal Avionics Sys. Agfa-Gevaert N. Building up on this foundation of supposed knowledge, the heart of Uniloc's case on willfulness was and remains copying. It contends the jury could properly find that: 1 Microsoft "reverse-engineered" and "hacked into" the sample Uniloc provided in ; 2 Microsoft lacked evidence of independent development and was gathering "competitive intelligence" in the field in ; and 3 the ' patent was published months before David Pearce's June notebook notation purportedly disclosing the conception of PA at Microsoft.

It would be a stretch, but it is not impossible to reach that conclusion. But this Court has a gatekeeping role with respect to the stringent Seagate standard, and Uniloc's inference upon inference could not, as a matter of law, have left jurors with a "clear conviction or firm belief" that Microsoft knew it infringed because it stole some idea of Uniloc's embedded in the ' patent.

Uniloc's recurrent headline that Microsoft "went into the code and opened up the hood" is catchy, but it is not backed up by the facts. Richardson's testimony, combined with trial exhibits , and , does not prove Microsoft did anything with the sample or to it besides what was asked of it: "normal end user testing of the Uniloc code to determine its viability for use with Microsoft's products.

X-6 Uniloc discussing Microsoft's conclusion that the security was "fairly easy to defeat" and hope that Uniloc could "get back to Microsoft fairly quickly Moreover, Uniloc ignores the absolute lack of connection between the sample and David Pearce or programmer Mr.

Hughes for that matter , the inventors of PA. Neither worked for Microsoft in , and Mr. Hughes lived and worked in Ireland, not Australia or Redmond. Uniloc's theory essentially required the jury to believe that some unknown Microsoft employee in Redmond who tested Uniloc's sample that was sent in actually "hacked" into the product and saved or passed on Uniloc's software, its code or some idea contained in it, to Mr.

Pearce when he joined Microsoft three years later in Then, the jury must have assumed Mr. Pearce, in an elaborate effort to cover-up the theft, conjured up ideas and wrote them in a notebook with false dates, describing a request for proposals to send out to programmers for detailed implementation in the early forms of PA. The trial record makes such a leap in logic not just unreasonable but fantastic, especially within the framework of clear and convincing proof. Uniloc's last shot is this: Mr.

Pearce got the idea of "Machine ID incorporate with PID" a "mere" four months after the ' patent issued, when he was gathering intelligence in the field. Proof that Microsoft and others surveyed possible solutions to a growing problem in the s is a far cry from proving Mr. Pearce located, much less copied, some idea or design in Claim 19 from a software company halfway around the world in Australia. Otherwise, again, all accused infringers who review trade publications or go to industry conferences would be branded willful copiers.

In fact, Uniloc's only "evidence" here is the absence of greater detail in Mr. Richardson, Australia, or even Mr. Gledhill or the Microsoft Institute. In sum, vast and overlapping evidentiary gaps doomed Uniloc's disjointed willfulness presentation from the start. Even if Seagate's first prong was satisfied which it was not the totality of circumstances point overwhelmingly against a known or obvious risk of infringement.

The jury's conclusion of willfulness therefore must be set aside. Pursuant to 35 U. Apotex, Inc. At trial, Microsoft argued that Uniloc could not have it both ways. That is, if PA infringed then Claim 19 must be invalid as anticipated per 35 U. While the Court has discretion to decline to address these issues given its JMOL finding of no infringement, the Federal Circuit has recognized that in some circumstances it may be the better practice to tackle invalidity.

See generally Phonometrics, Inc. Telecom Inc. Hoping for some finality, the Court pushes on. Anticipation is a question of fact requiring "that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.

Kent State Univ. To anticipate, a reference must disclose all elements "arranged as in the claim. VeriSign, Inc.

The jury's finding of no anticipation is reviewed for substantial evidence. Voda v. Cordis Corp. Microsoft avers that Uniloc boxed itself in with an overbroad and inconsistent reading of the LUID and generating means: that is, if the ' patent can be read to capture PA, then all of Claim 19's limitations are found within U.

See Ecolab, Inc. FMC Corp. Barient, Inc. Otherwise, Microsoft argues, if read correctly Claim 19 would not cover PA and admittedly Hellman would not anticipate. Southwall Techs. Cardinal IG Co. Hellman's patent entitled "Software Distribution System" claims an authorization process and system aimed at software piracy.

In general terms, it produces an authorization from inputs to identical algorithms on both the user and company side to tie software to a computer. It is undisputed that Hellman uses a cryptographic one-way hash function similar to PA. Microsoft argues that the following inputs to Hellman's algorithms, which produce output authorization code A , are much more unique and associated with a user than the inputs in PA: a secret key identifier of the computer embodied in the hardware SK , a random or nonrepeating number R , the serial number, the software package name H , the number of uses N and user billing information.

At the end of the day, the parties split over Hellman's random input R. The R value typically is generated from a "noisy amplifier", which is a piece of computer hardware. Boiled down, this means R comes from the user's computer. Microsoft likens R to the random digit string coming from the Product Key on the software case: if that alphanumeric value can form a unique association by virtue of a person typing it in, then so too must R, which a user writes down or phones in or otherwise transmits to the vendor with his or her personal information.

Uniloc's retort is that Hellman discloses a hardware based system and says nothing about identifiers unique to a user and separate from the computer such as a Product Key. R, then, is platform-related information very different from a Product Key, and Hellman does not teach the unique user association called for in Claim At times, a prior art reference certainly can "speak[] for itself.

Desire2Learn, Inc. But caution is required to ensure this writer's judgment is not substituted for the jury's. And while the call is close it cannot be said Microsoft proved by clear and convincing evidence that Hellman teaches each limitation of Claim To begin, Dr. Wallach did not conduct the typical explicit element-by-element comparison between Claim 19 and Hellman so as to connect the dots.

Despite Professor Hellman's fact testimony, there was virtually no discussion of several other specific aspects of Claim 19 as they related to the reference, such as mode-switching means or registration system. These elements are not inherent in the patent itself, so the absence of rebuttal evidence from Uniloc, while interesting, does not prove the point.

And, while the post-trial arguments were illuminating on the issue were this Court acting as fact-finder the jury heard substantial evidence that the inputs to Prof. Hellman's cryptographic function are machine identifiers or otherwise generated by the manufacturer and are not unique to the user.

The evidence as a whole does not compel the conclusion urged by Microsoft that if the Product Key input from a user's software copy creates a unique association, then so too must Hellman's computer-generated then user-transmitted R value.

In the alternative, Microsoft contends that Hellman comes "within a hairsbreadth" of anticipating Claim 19 and thus alone makes it obvious. Or, at minimum, Hellman, combined with U. A claim is obvious if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Teleflex Inc. Although ultimately a question of law, underlying factual determinations are reviewed for substantial evidence. Accordingly, based upon the consistent use of the phrase "if and only if' in the specification, coupled with the fact that there is nothing in the specification to indicate that the patentee contemplated an alternative description to the broad one explicitly set forth in the ' Patent, this term shall be construed as follows: A system that allows digital data or software to run in a use mode on a platform if and only if an appropriate licensing procedure has been followed.

Here again, Uniloc objects to Microsoft's construction by arguing that the user, even before registering, is already using the software pursuant to the license when he or she initially loads the software onto his or her computer. This Court, however, finds that the previous construction of claim term numbers 4 and 5 and the accompanying discussion of "intending" and "intended" are equally applicable to the instant terms because Claim 17 employs the term "intending user" to refer to a person on the eve of completing the registration process so as to switch the software into the fully enabled mode.

By virtue of the fact that he or she is completing the registration process, the user has already loaded the software onto his or her computer and had access to the software in a limited mode. Instead, the "intending user" in claim 17 expects in the future to complete the registration process so as to become a licensee and access the fully enabled mode of the software.

For these reasons, these terms shall be construed as follows: Provided to the mode-switching means by the person who intends to become a licensee; and Communicated to the person who intends to become a licensee. The first dispute here arises due to Microsoft's contention that the checking must be done on the remote side.

Because claim 12 simply states that checking is done by the registration authority and not at the registration authority, and in the absence of Microsoft offering intrinsic evidence to support its commonsense reading, this Court declines to include the limitation that the checking is necessarily done on the remote side.

The next dispute centers upon that part of Microsoft's proposed construction focusing on the user's intent, with Uniloc arguing "it would place an impossible burden of proof on Uniloc to somehow prove the intent of the user when entering the unique information. Nevertheless, the Court agrees that a construction emphasizing the user's intent deviates from the language of claim Uniloc, without citing to intrinsic evidence, seemingly wishes to generalize the language of this claim term such that, under its construction, any registration system on the remote side would be adequate so long as it is a registration system capable of generating a security key.

This ignores, however, the fact that claim 12 unambiguously states that "said registration system," i. In turn, a "replica" is "an exact reproduction.

This claim term, therefore, does not contemplate just any registration system capable of generating a security key, but instead, envisions a replica of the registration system first recited in claim Turning to Microsoft's proposed construction, the Court declines to adopt that portion focusing on the specific functions performed by the registration system as the intrinsic evidence does not support a reading that the registration system first recited in claim 12 necessarily performs a "checking" function by itself.

Moreover, Microsoft's proposed language prohibiting the use of encryption and decryption technology will not be adopted as the Court's previous discussion of this matter is equally applicable here. From claim 14, therefore, it is clear that the serial number is a number generated from computer environment information, which obviously forms the basis of Uniloc's proposed construction. Microsoft, however, points out that Uniloc's proposal reads the word "serial" out of the claim term and simply adds a layer of redundancy to the language of claim This Court agrees and finds that the ordinary meaning of the term "serial number" is readily apparent from its widely accepted definition.

Microsoft argues, however, that the specification discloses no structure corresponding to the recited function because generic references to software logic and black boxes merely indicate the function to be performed but not adequate structure to perform it. Microsoft likewise argues that Uniloc's attempt to associate licensee unique ID generation to platform unique ID generation is conclusory and not supported by the specification.

To determine whether a disclosure of structure is sufficient, the Court should ask "first whether structure is described in the specification, and, if so, whether one skilled in the art would identify the structure from the description. Storage Devices, Inc. While it is true that the inventor need not disclose all details of structures well known in the art, "the specification must nonetheless disclose some structure.

Home Depot U. Broadcom Corp. In this case, the structure disclosed is software logic, see, e. Default Proof F. In answering this question, this Court admittedly is unable to determine on its own whether one skilled in the art would identify the structure from this description.

To this end, Uniloc has submitted the declaration of its expert, David Klausner, who explains that one skilled in the art would readily understand that the structure used to generate licensee unique IDs could also be used to generate platform unique IDs.

Microsoft takes issue with this declaration, not by submitting its own expert declaration, but instead by arguing that general software logic is an insufficient corresponding structure. This is unpersuasive, however, because the declaration links the structure to the specific summation algorithm already found to correspond sufficiently to the generation of a licensee unique ID. For these reasons, this term shall be construed as follows: Function: to generate a platform unique ID; Structure: a summation algorithm or a summer and equivalents thereof.

With the disputed claim terms construed, the parties shall comply with the briefing schedule as modified by the Court on July 24, The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Being the only one of its kind: the unique existing example of Donne's handwriting. Without an equal or equivalent; unparalleled. Characteristic of a particular category, condition, or locality: a problem unique to coastal areas. Informal Unusual; extraordinary: spoke with a unique accent.

Because the parties are familiar with the various documents that comprise the prosecution history, for ease of reference, the Court will simply cite the prosecution history by Bates Number, i.

Applicant respectfully submits that Chou is not particularly relevant to the claims of the present application because Chou covers a version of a hardware lock whereby each and every copy of the software to be protected must have unique identity information embedded in it at the time of manufacture so that it can communicate with a local hardware lock.

In Chou, all communicating security devices are local. Therefore, with particular reference to pending Claim 1, for example, Chou does not include "local licensee unique ID generating means" as well as "remote license unique ID generating means". Current Claim 1 is therefore clearly patentably distinguished over Chou. Furthermore, an underlying "behavioral" feature of the present invention is that a single common algorithm is embedded in all copies of software to be protected.

Hence, the software protected by the present invention does not need unique identifying numbers prestored in each copy of the software. The uniqueness is ultimately provided by the end users of the software in the course of supplying their own identification details, which details are subsequently checked by use of a matching algorithm at a remote location.

This important behavioral feature of Applicant's claimed invention "local licensee unique ID generating means" is nowhere to be found in Chou. But, to the extent that there is disagreement, the Court notes it has adopted "generate" because it is consistent with the language of the claim terms themselves as well as the rest of the claim language. See IMS Tech. Haas Automation, Inc. Nonetheless, to the extent Microsoft may have intended to press its proposed construction of "use mode," this writer notes that the Court's construction incorporates the limitation expressed therein: that use mode means using the data in accordance with the obligations imposed by the license.

Fortunately for this Court, the robe hides a multitude of fashion sins; and this Court's sense of what "match" means will revolve around the extent of identity, not the degree of good taste. EXACT stresses a very strict agreement with fact, standard, or truth.

Your Notes edit none. Sega of America, Inc. Authorities 26 This opinion cites: Edward H. Phillips v. Awh Corporation, Hopeman Brothers, Inc. Advanced Cardiovascular Systems, Inc. Arm Holdings, Plc, F. Please support our work with a donation. United States District Court, D. Rhode Island. August 22, Claim Construction Principles "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.

Disputed Claim Terms In true gladiatorial spirit reflecting the high stakes in this fight, the parties manage to disagree on the construction of no less than 24 claim terms, with the parties battling more vigorously over the construction of some terms than others. Licensee unique A unique identifier A one of a kind i. Registration key product of data about the user, 3.

For example, the ' Patent states: The algorithm provides a registration number which can be "unique" if the details provided by the intending licenses upon which the algorithm relies when executed upon the platform are themselves "unique". Moreover, the ' Patent provides: In any event, in particular preferred forms, a serial number see further on is included in the registration number generation algorithm which introduces an additional level of uniqueness into the registration number calculation process.

Vendor and Information The parties next dispute whether the licensee unique ID may be derived from vendor information. Moreover, in the sixth embodiment, the ' Patent provides: 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 Microsoft first asserts that applicant disclaimed the use of vendor information by pointing to the following statements: It is inherent in the system of the present application, as claimed, that the "Licensee Unique ID" is entirely the product of data generated locally as distinct from data added before delivery of the software to the local location for use thereby distinguishing over Chou or subsequently from a remote location thereby distinguishing over Grundy.

The fundamental principles underlying the operation of the present invention are simple yet highly effective. The uniqueness of identity by which each copy of the software to be protected is distinguished from any other copy is provided by each and only each new user: to reiterate the system does not require the introduction of any unique identifiers from any other source, either before delivery of the software for use by the intending user or subsequent to delivery thereof.

Moreover, the statements in the prosecution history immediately prior to the cited excerpt could be read to imply that the references to local and remote actually refer to the location of where the licensee unique ID is generated, and not the inputs of the licensee unique ID: In response, the Applicant submits herewith redrafted claims, the main claims of which include, broadly, the following two distinguishing limitations: a The "Licensee Unique ID" on which the registration system relies for matching for verification purposes is generated locally, and b The algorithm used to generate locally the "Licensee Unique ID" is replicated remotely for the purposes of remote generation of a separate "Licensee Unique ID" for matching purposes.

At one point, the PTO stated: There is, however, no indication in Grundy that this information cannot be provided to the local user, nor is there any limitation in the claims which would prohibit vendor information from being part of the authorization process.

In response, Uniloc stated: In the Examiner's last paragraph relating to Grundy, the Examiner argues that Grundy does not preclude providing additional information to the local user. The fact, if true, that Grundy does not teach away from providing the information does not therefore mean that Grundy teaches that the information is provided or that doing so would be obvious.

User and Platform Information Finally, Microsoft asserts that the specification and prosecution history show that the licensee unique ID "is based only on local information about the user, rather than information about the user's computer [i. For instance, the ' Patent provides that platform information may be used to create a serial number, which may then be combined with user information to create a licensee unique ID: After selecting "continue", the registration routine begins the first step in the generation of a security key which will be unique to the current copy of the software and to certain features of the environment in which it runs.

As shown in FIG. Additionally, claims 13 and 14 provide: The registration system of claim 12, wherein said security key is generated by a registration number algorithm. 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.

Preferably, the 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 e. Claim 1 states in full: 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.

Claim 2 provides: The system of claim 1, wherein said local licensee unique 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. And, claim 6 provides: 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.

The use mode is to be distinguished from what might generally be termed unlicensed modes of operation which is not to say unauthorized modes of operation as typified by the demonstration modes later described in this specification. Local licensee Function: to create This term is construed Function: to generate unique ID generating a local [or remote] and applied in a local or means licensee unique ID; accordance with 35 remote licensee Structure: software U.

Remote licensee e. The functional means summer aspect of this term Structure: a summation requires the generation algorithm 8. The sole corresponding structure disclosed in the specification for performing the function of this term is a summer. The district court, however, has not determined the precise algorithm that is part of the recited structure. The relevant portion of Microsoft's Computer Dictionary, attached as Exhibit D to Uniloc's claim construction brief, defines the term algorithm as: In the most general sense, any set of instructions that can be followed to carry out a particular task.

For example, a recipe in a cookbook could be considered an algorithm. In computer usage, an algorithm can usually be explicitly encoded in a set of computer language instructions that manipulate data of some sort. In making this argument, Microsoft hawks the following passages of the prosecution history in which the applicant was setting forth various reasons for distinguishing the prior art: In addition, the Grundy system requires a mechanism for encrypting the registration code for its return trip from the second platform to the first platform:.

Advantageously, the system of the claimed invention does not require that an encryption key be passed from the second platform to the first platform. This feature is now clearly included in all proposed main claims, and, it is submitted, patentably distinguishes the present invention over Grundy. Generated by a Function: generating A duplicate copy of Generated by a third party means of an enabling key; the registration key third party's use of operation of a duplicate Structure: software generating means is a duplicate copy or copy of said e.

The terms "fully-enabled mode" and "full version run" are used similar to "use mode" to mean allowing unrestricted use in accordance with the license. Mode switching Function: to permit This term is construed Function: to permit means the data to run in a and applied in the digital data use mode; Structure: accordance with 35 or software to run software e.

The specification, after the summary of the invention, simply refers to "a change" and "no change": With reference to FIG. If they do, a comparison is made by the registration routine between what is stored in the key file and the environment to determine whether a change has taken place to the environment as compared with what is stored in the key file. If no change is detected, then the protected application is permitted to run normally. Wherein said Wherein the registration The registration system Wherein the registration registration system authority also and all of its features system is replicated at the has a system that and capabilities, attachable to software registration authority generates a security including the to be protected key features of generating is reproduced a security key exactly at and checking that the registration the information authority unique to the user is correctly entered at the time that the security key is generated, must be present on both the local and the remote sides.

Generating a security key cannot involve the use of encryption or decryption technology. Accordingly, this term shall be construed as follows: A number that is one of a series.

Platform unique Function: to generate This term is construed Function: to generate ID generating means a platform and applied in a platform unique ID; Structure: accordance with 35 unique ID software e. There is no corresponding structure disclosed in the specification for performing the function of this term. The Federal Circuit has also rejected the argument that an exception can be made for a reasonable royalty calculated on the basis of sales of the entire product if one sets the royalty rate low enough.

The Federal Circuit, though, perceives a significant difference between the two methods of calculating damages, due to the prejudicial effect of presenting the overall sales figure to the jury where only a patented component is at issue. Uniloc left open the question of to what extent, if any, its rule applies when the patent claim, despite the invention being directed to an improved component, is written to cover the infringing product as a whole, rather written to cover a single component of a multi-component product.

Exmark involved the former type of patent: the patent claimed "[a] multiblade lawn mower," although the innovation clearly involved only "improved flow control baffles" on the mower. The court agreed with Defendant in general that value must be "apportioned" in the damages experts' testimony between the improved feature and the conventional features of the product.

The Court, however, rejected Defendant's argument that Plaintiff's expert should have been required to separate the value of the improved baffle from the overall value of the product by using as a royalty base the value of the improved baffle feature, rather than the sales of the entire lawn mower product.

The Court held that it was permissible for Plaintiff's expert to calculate reasonable royalty damages as a percentage of overall sales of the lawn mower, noting that "[u]sing the accused lawn mower sales as the royalty base is particularly appropriate in this case because the asserted claim is, in fact, directed to the lawn mower as a whole.

There is no unpatented or non-infringing feature of the product. Any apportionment of the value of the improvement should be done by setting the royalty rate, rather than by adjusting the royalty base. In other words, in the context of a patent directed to an improved feature "improved flow control baffles" yet claiming in the claims an entire product "[a] multi-blade lawn mower" comprising various features, all but one of them conventional , it may be acceptable to let the jury know the overall sales of the entire product, and to compare the Defendant's proposed royalty to those overall sales, and to prepare a pie chart showing Plaintiff's claimed damages as a sliver of the overall revenue pie -- all of which were the tactics found to be the basis for reversible error in Uniloc.