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DOCKET NO.

: 098850-0017
Filed on behalf of Unified Patents Inc.

By: Michael V. OShaughnessy Ashraf Fawzy, Reg. No. 67,914


Artem N. Sokolov, Reg. No. 61,325 Roshan Mansinghani, Reg. No. 62,429
McDermott Will & Emery Unified Patents Inc.
500 N. Capitol St., NW 1875 Connecticut Ave. NW, Floor 10
Washington, DC 20001 Washington, D.C., 20009
Tel: (202) 756-8000 Tel: (202) 871-0110
Email: Moshaughnessy@mwe.com Email: afawzy@unifiedpatents.com
Email: sokolov@mwe.com Email: roshan@unifiedpatents.com

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.


Petitioner

v.

SOFTVAULT SYSTEMS, INC.


Patent Owner

IPR2017-01788
U.S. Patent 6,249,868

METHOD AND SYSTEM FOR EMBEDDED, AUTOMATED,


COMPONENT-LEVEL CONTROL OF COMPUTER SYSTEMS AND
OTHER COMPLEX SYSTEMS

PETITION FOR INTER PARTES REVIEW


IPR2017-01788
U.S. Patent 6,249,868

TABLE OF CONTENTS
I. INTRODUCTION ...........................................................................................1

II. MANDATORY NOTICES .............................................................................1

A. Real Party-in-Interest - 37 C.F.R. 42.8(b)(1) .....................................1


B. Patent Owner and Related Matters 37 CFR 42.8(b)(2)...................1

C. Counsel and Service Information ..........................................................3

III. CERTIFICATION OF GROUNDS FOR STANDING ..................................4


IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ....................4

A. Prior Art Patents and Publications.........................................................4


B. Statutory Grounds of Challenge ............................................................5
V. THE 868 Patent ..............................................................................................5
A. Summary of the Disclosure of the 868 Patent .....................................6

B. Prosecution History of the 868 Patent .................................................9


VI. INVALIDATING PRIOR ART ....................................................................11

A. UK Patent Application Publication No. GB 2303726A by


Collins et al. ........................................................................................11

B. U.S. Patent 5,790,664 by Coley et al. .................................................13


VII. Level of Ordinary Skill in the Art .................................................................15

VIII. CLAIM CONSTRUCTION ..........................................................................15

A. component (claims 18, 19, 40, and 44)............................................16


B. agent (claims 1, 2, 18, 19, 40, and 44) .............................................17

C. embedded (claims 1, 18, 19, and 44) ...............................................18

D. coupled to (claims 1 and 44)............................................................19


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E. handshake operation (claims 1, 19, and 44) ....................................20

IX. THE CHALLENGED CLAIMS ARE UNPATENTABLE..........................22

A. The (Minor) Differences Between the Challenged Claims .................22

B. Ground I: Claims 1, 2, 18, 19, and 44 are anticipated by


Collins..................................................................................................24

1. Independent Claim 1 is anticipated by Collins .........................24

2. Dependent Claim 2 is anticipated by Collins............................34


3. Dependent Claim 18 is anticipated by Collins .........................35

4. Independent Claim 19 is anticipated by Collins .......................38

5. Independent Claim 44 is anticipated by Collins .......................42


C. Ground II: Claims 19 and 44 are anticipated by Coley ......................45
1. Independent Claim 19 is anticipated by Coley .........................46
2. Independent Claim 44 is anticipated by Coley .........................54

D. Ground III: Dependent Claim 40 is obvious over Coley ....................57


X. CONCLUSION..............................................................................................61

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U.S. Patent 6,249,868

Exhibit List

Exhibit Description

1001 U.S. Patent 6,249,868 to Sherman (the 868 Patent)


Excerpts of Prosecution History from Related U.S. Patent No.
1002
6,594,765
1003 Declaration of Dr. Peter Alexander, Ph.D. and Appendix A

UK Patent Application Publication GB 2303726A to Collins et


1004
al. (Collins)

1005 U.S. Patent 5,790,664 to Coley et al. (Coley)

SoftVaults Patent Infringement Complaint against Adobe


1006
Systems Incorporated, Case No. 16-cv-4802 (NDCA)

SoftVault Systems v. Alcatel-Lucent USA, Inc., Case No. 13-


1007
cv-0751 (NDCA), Joint Claim Construction Statement (D.I. 37)

Additional References Highly Relevant to Validity of the 868


1008
Patent

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I. INTRODUCTION
Under 35 U.S.C. 311 and 37 C.F.R. 42.100, Petitioner Unified Patents

Inc. (Unified or Petitioner) respectfully requests institution of inter partes

review with respect to claims 1, 2, 18, 19, 40 and 44 of U.S. Patent 6,249,868 (the

868 Patent). The 868 Patent is attached to this Petition as EX1001.

II. MANDATORY NOTICES


A. Real Party-in-Interest - 37 C.F.R. 42.8(b)(1)
Unified certifies that it is the real party-in-interest, and that no other party

exercised control or could exercise control over its participation in this proceeding,

the filing of this petition, or the conduct of any ensuing trial.

B. Patent Owner and Related Matters 37 CFR 42.8(b)(2)


SoftVault Systems, Inc. (SoftVault) purports to own the 868 Patent, but

there is no assignment record for the 868 Patent in the U.S. Patent and Trademark

Office Assignment database. See EX1005 at 10. SoftVault has filed a number of

lawsuits asserting the 868 Patent, as identified in the chart below:

Name 1 Case No. District Filed


SoftVault Systems, Inc. v. Microsoft 06-cv-00016 E.D. Tex. 01-11-2006
Corporation
SoftVault Systems, Inc. v. Yahoo! Inc. et 06-cv-00017 E.D. Tex. 01-11-2006
al
SoftVault Systems, Inc. v. Intel 10-cv-00219 E.D. Tex. 07-01-2010
Corporation et al

1
Cases identified with the * symbol are currently pending.

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Name 1 Case No. District Filed


SoftVault Systems, Inc. v. Sybase, Inc. 12-cv-01099 N.D. Cal. 03-05-2012
SoftVault Systems, Inc. v. Symantec 12-cv-01658 N.D. Cal. 04-03-2012
Corporation
SoftVault Systems, Inc. v. Research In 12-cv-05544 N.D. Cal. 10-29-2012
Motion Corporation
SoftVault Systems, Inc. v. Novell, Inc. 12-cv-05541 N.D. Cal. 10-29-2012
SoftVault Systems, Inc. v. International 12-cv-05546 N.D. Cal. 10-29-2012
Business Machines Corporation
SoftVault Systems, Inc. v. Motive, Inc. 13-cv-00751 N.D. Cal. 02-20-2013
SoftVault Systems, Inc. v. Juniper 13-cv-00752 N.D. Cal. 02-20-2013
Network, Inc.
SoftVault Systems, Inc. v. Citrix Systems, 13-cv-00754 N.D. Cal. 02-20-2013
Inc.
SoftVault Systems, Inc. v. Mobile Iron, 13-cv-03088 N.D. Cal. 07-02-2013
Inc.
SoftVault Systems, Inc. v. Motorola 13-cv-03073 N.D. Cal. 07-02-2013
Solutions, Inc.
SoftVault Systems, Inc. v. Cisco Systems 13-cv-03087 N.D. Cal. 07-02-2013
Inc.
SoftVault Systems, Inc. v. Trend Micro 13-cv-03086 N.D. Cal. 07-02-2013
Incorporated
SoftVault Systems, Inc. v. Dell Inc. 13-cv-03074 N.D. Cal. 07-03-2013
SoftVault Systems Inc. v. General Electric 14-cv-01164 N.D. Cal. 03-12-2014
Company
SoftVault Systems Inc. v. Honeywell 14-cv-01166 N.D. Cal. 03-12-2014
International, Inc.
SoftVault Systems, Inc. v. VMware, Inc. 14-cv-01170 N.D. Cal. 03-12-2014
SoftVault Systems, Inc. v. Boxtone, Inc. et 14-cv-01155 N.D. Cal. 03-12-2014
al
SoftVault Systems, Inc. v. Tangoe, Inc. 14-cv-03223 N.D. Cal. 07-16-2014
SoftVault Systems, Inc. v. Sophos Inc. 14-cv-03222 N.D. Cal. 07-16-2014
SoftVault Systems, Inc. v. PTC, Inc. 14-cv-03215 N.D. Cal. 07-16-2014
SoftVault Systems, Inc. v. National 14-cv-03212 N.D. Cal. 07-16-2014
Instruments Corporation
SoftVault Systems, Inc. v. Dassault 14-cv-03221 N.D. Cal. 07-16-2014
Systemes SolidWorks, Corporation
SoftVault Systems Inc. v. Sensus USA Inc. 14-cv-05411 N.D. Cal. 12-10-2014

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Name 1 Case No. District Filed


SoftVault Systems Inc. v. Itron, Inc. 14-cv-05408 N.D. Cal. 12-10-2014
SoftVault Systems Inc. v. Landis+Gyr Inc. 14-cv-05410 N.D. Cal. 12-10-2014
SoftVault Systems, Inc. v. Landesk 15-cv-01017 N.D. Cal. 03-02-2015
Software, Inc.
SoftVault Systems, Inc. v. Soti, Inc. 15-cv-01018 N.D. Cal. 03-04-2015
SoftVault Systems, Inc. v. Elster Solutions, 15-cv-01014 N.D. Cal. 03-04-2015
LLC
SoftVault Systems, Inc. v. Centrify 15-cv-01013 N.D. Cal. 03-04-2015
Corporation
SoftVault Systems, Inc. v. Quark Software, 15-cv-02963 N.D. Cal. 06-25-
Inc. 2015-06
SoftVault Systems, Inc. v. Bentley Systems 15-cv-02962 N.D. Cal. 06-25-2015
Incorporated
SoftVault Systems, Inc. v. Sage Software, 15-cv-02972 N.D. Cal. 06-25-2015
Inc.
SoftVault Systems, Inc. v. HP Inc. 16-cv-00379 N.D. Cal. 01-22-2016
SoftVault Systems, Inc. v. AT&T Mobility 16-cv-00374 N.D. Cal. 01-22-2016
LLC
SoftVault Systems Inc. v. Sony DADC US 16-cv-02241 N.D. Cal. 04-25-2016
Inc.
SoftVault Systems Inc. v. Samsung 16-cv-04802 N.D. Cal. 08-19-2016
Electronics America, Inc.
SoftVault Systems Inc. v. Oracle 16-cv-06454 N.D. Cal. 11-04-2016
Corporation
SoftVault Systems Inc. v. Adobe Systems 16-cv-06474 N.D. Cal. 11-07-2016
Incorporated
SoftVault Systems Inc. v. Kony, Inc.* 16-cv-06469 N.D. Cal. 11-07-2016
SoftVault Systems Inc. v. F-Secure, Inc. 16-cv-06473 N.D. Cal. 11-07-2016
SoftVault Systems Inc. v. AVG 16-cv-06471 N.D. Cal. 11-07-2016
Technologies USA, Inc.
C. Counsel and Service Information
Artem N. Sokolov (Reg. No. 61,325) will be the lead counsel; Michael V.

OShaughnessy, Ashraf Fawzy (Reg. No. 67,914) and Roshan Mansinghani (Reg.

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No. 62,429) will act as back-up counsel. Pursuant to 37 C.F.R. 42.10(b), a Power

of Attorney accompanies this Petition.

Unified consents to e-mail service at Moshaughnessy@mwe.com,

asokolov@mwe.com, afawzy@unifiedpatents.com, roshan@unifiedpatents.com

and IPdocketMWE@mwe.com. Counsel for Petitioner may be addressed at 500

North Capitol St. NW, Washington, DC 20001, Tel: (202) 756-8000, Fax: (202)

756-8087 and Unified Patents Inc., 1875 Connecticut Ave. NW, Floor 10,

Washington, D.C., 20009, Tel: (202) 871-0110.

III. CERTIFICATION OF GROUNDS FOR STANDING


Petitioner certifies that the patent for which review is sought is available for

inter partes review and that Petitioner is not barred or estopped from requesting an

inter partes review on the grounds set forth in this Petition. 37 C.F.R. 42.104(A).

IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED


This Petition is supported by the declaration of Dr. Peter Alexander, Ph.D.

(Decl.) (EX1003) and requests that the Board cancel claims 1, 2, 18, 19 and 44

as unpatentable under 35 U.S.C. 102 and claim 40 as unpatentable under 35

U.S.C. 103. 35 U.S.C. 314(a); Rules 42.22(a)(1) and 42.104(b)(1)-(2).

A. Prior Art Patents and Publications


Petitioner relies upon the following patents and printed publications, none of

which were previously considered by or presented to the USPTO.

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1) UK Patent Application Publication GB 2303726A to Collins et al.


(Collins) (EX1004) published on February 26, 1997. Collins is
prior art to the 868 Patent under 35 U.S.C. 102(b).

2) U.S. Patent 5,790,664 to Coley et al. (Coley) (EX1005) was filed


on Feb. 26, 1996, and issued on August 4, 1998. Coley is prior art
to the 868 Patent under 35 U.S.C. 102(a) and 102(e).

3) Additional references that are highly relevant to the 868 Patent are
provided in EX1008.

B. Statutory Grounds of Challenge


This Petition presents the following grounds:

Ground I Claims 1, 2, 18, 19, and 44 are anticipated by Collins

Ground II Claims 19 and 44 are anticipated by Coley

Ground III Claim 40 is obvious over Coley

These grounds are not redundant because the prior art addresses different

claims, and also because the prior art addresses different purported embodiments

of the 868 Patent (hardware and software embodiments).

V. THE 868 PATENT


The 868 Patent was filed as U.S. App. 09/163,094 on September 29, 1998

and issued on September 30, 2008. The 868 Patent is a continuation-in-part of

Application No. 09/047,975 (the 975 Application) filed on March 25, 1998.2

2
The 975 Application was incomplete as filed, and was abandoned for failure to

pay the filing fee. The Petitioner does not concede that the 868 Patent is entitled to

the priority date of the 975 Application. The references relied upon here qualify as

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Because the 868 Patent was filed prior to enactment of the America Invents Act

(AIA), the pre-AIA statutory framework applies.

A. Summary of the Disclosure of the 868 Patent


The 868 Patent is titled Method and System for Embedded, Automated,

Component-Level Control of Computer Systems and Other Complex Systems,

and generally relates to protecting and controlling personal computers and/or

components of those computers. For this purpose, the 868 Patent discloses the

utilization of a so-called agent that is embedded or installed within a device or

component of a system, such as a personal computer. The embedded agent is

responsible for enabling or disabling the component or device based on

instructions from a remote server. See 868 Patent at 3:55-64. The 868 Patent also

prior art, and the definition of a PHOSITA is the same, regardless of whether the

975 Application priority date is accorded to the 868 Patent.

There is also a question regarding whether the inventorship of the 868 Patent is

correct. Specifically, the abandoned 975 Application listed seven inventors, while

the 868 Patent identified only six inventors. This is because the seventh inventor,

Mr. Ananiades, refused to assign to SoftVault his invention rights. Although the

868 Patent included the same 48 claims as the 975 Application, it neither listed

Mr. Ananiades as a co-inventor nor acknowledged his contribution to the claims.

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discloses a server that communicates with the embedded agent by way of a

communication medium to enable (or disable) the embedded agent. Id.; see also

5:11-12; 8:10-28. The various state transitions described in the 868 Patent are

shown in Figure 4, which is reproduced below.

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The 868 Patent discloses both a hardware and a software configuration of

the embedded agent. See, e.g., id. at 16:20-22; 30:16-24.

Figure 3 of the 868 Patent, reproduced for convenience below, provides an

illustrative example of the hardware configuration of the 868 Patent, where an

agent 302 (red) is embedded in the circuit board 306 (yellow).

The 868 Patent also discloses embodiments where the agent is implemented in

software, such as a particular software routine:

In a preferred implementation of this embodiment, the server


and client components are implemented in software and the
embedded agents are implemented as hardware logic circuits.
However, all three of these components may be implemented
either as software routines, firmware routines, hardware

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circuits, or as a combination of software, firmware, and


hardware.

Id. at 5:56-64 (emphasis added). For example, the server may determine whether a

particular computer or user has a valid license to a specific software program. If a

valid license exists, the server may authorize the embedded agent to enable that

particular software program. Id. at 29:52 to 30:13.

B. Prosecution History of the 868 Patent


The 868 Patent did not receive a substantive Office Action during

examination. However, U.S. Patent No. 6,594,765 (hereinafter the 765 Patent)

is a continuation-in-part of the 868 Patent, contains nearly identical claims to the

868 Patent, and was examined on the merits. As a result, the 765 Patents

prosecution file, and the Applicants statements regarding the meaning of claim

terms overlapping with the 868 Patent, is relevant to understanding and

interpreting the 868 Patents claims. See Datamize LLC v. Plumtree Software,

Inc., 417 F. 3d 1342, 1353 (Fed. Cir. 2005) (prosecution history of a continuation

application is relevant when construing the claims of the parent application).

During prosecution of the 765 Patent, each of the claims was rejected as

anticipated over U.S. Patent 5,276,728 by Pagliaroli et al. See EX1002 (Office

Action dated August 6, 2002). Additional prior art was made of record. Id. In

responding to the Office Action, the Applicants attempted to distinguish the prior

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art by focusing on the terms server, agent, and handshake each of which

appears in the claims of the 868 Patent.

With respect to the claimed server, Applicants cited to the following

definition from the Microsoft Computer Dictionary (1994):

On a local area network, a computer running administrative


software that controls access to all or part of the network and its
resources (such as disk drives or printers). A computer acting as
a server makes resources available to computers acting as
workstations on the network. Compare client; see also
client/server architecture.
EX1002 (Applicants November 13, 2002 Office Action Response) at 4.

Applicants also noted that: In the current application, a server is definitely

characterized as a computer, for example, on lines 19 and 20 of page 5, although

not necessarily connected to an embedded agent via a local area network. Figure 5

provides a state diagram of a servers interaction with an embedded agent, and

Figures 6A-9B detail messages employed by the server. Id.

With respect to the claimed embedded agent, Applicants argued that:

In computing, an agent refers to a processing entity that


operates according to a hardware-implemented or stored
firmware or software program. Agents are not simply
switches, transceivers, or other simple electronic devices. The
embedded agents of the claimed present invention are described
in the Summary of the Invention section, beginning on line 13
of page 5, and in many places within the Detailed Description
of the Invention, including beginning on line 19 of page 8.
These agents exchange messages with a server in order to be
authorized by the server, enable operation of devices when they

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are authorized to do so, and undertake relatively complex


handshake operations in order to become authorized.
Id. at 5 (emphasis added).

With respect to the claimed handshake operation, Applicants argued that:

In one embodiment of the claimed invention, the handshake


operation involves an exchange of messages between a server
and an embedded agent by which secret information is
exchanged, and which results in an agreement between the
server and the embedded agent that the embedded agent is
authorized. The secret information is part of a subsequent
authorization protocol to which the server and embedded agent
also agree. Figures 7A-F and 8A-F illustrate the rather
elaborate handshake operation carried out by servers and
embedded agents in one embodiment of the claimed system.
Pagliaroli, by contrast, neither teaches nor suggests a
handshake operation comprising an exchange of messages
that leads to authorization of an embedded agent. Instead, in
Pagliaroli, a human directs a remote switch to either transition
to an OFF state, or to an ON state.
Id. at 5-6 (emphasis added).

VI. INVALIDATING PRIOR ART


The present Petition relies on the following prior art references, the contents

of which are summarized below.

A. UK Patent Application Publication No. GB 2303726A by Collins et al.


The GB 726 Publication by Collins et al. (Collins) is titled

Immobilization protection system for electronic products and components and is

generally related to an electronic security system that embeds electronic

immobilization protection devices (IPDs) in electronic products and components.

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See Collins (EX1004) at Abstract. The IPDs have controlled access to a security

service provider (SSP) and periodically send challenge messages to the SSP. Id.

Based on the response from the SSP, the IPD either renders the part inoperative

(if it receives an invalid response) or allows the part to function normally (if it

receives a valid response). See Collins at Abstract.

An example of Collins embedded IPDs 71 is shown in Figure 2, and the

Collins system itself is shown in Figure 4.

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Figure 2 shows IPDs 71 (circled in red) embedded in computer components

such as the CPU 61 (blue), SIMM memory modules 60 (yellow), and a hard disk

drive (HDD) 63 (green).

Figure 4 shows an example of a communication link between the embedded IPDs

of PC 20 and the SSP 23, way of a modem 21 connected to a phone network 22.

B. U.S. Patent 5,790,664 by Coley et al.


The 664 Patent by Coley et al. (Coley) is titled Automated System for

Management of Licensed Software, and generally relates to methods and systems

for automatically tracking use of a software and also for determining whether the

software is validly licensed and enabling or disabling the software accordingly.

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See Coley (EX1005) at Abstract. An example of Coleys license tracking system is

illustrated in Figure 1, which is reproduced below:

Figure 1 shows a licensing client module 108 (red) that is nested in a

software application 102 (yellow) on the hard drive 104 (green) of computer

100. Id. at 7:43-67. The client module 108 communicates with a remote licensing

server 110 (brown) by sending a licensing record inquiry message to the remote

server over a communication medium, such as the Internet 116. Id. at 7:51-61.

The remote server, in turn, uses the license inquiry message to check its records,

and then returns an appropriate response message to the licensing module. Id. at

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7:48-58. Based on the response from the server, the licensing module can enable or

disable the software application. Id. at 7:48-58. Specifically, in Coley, [t]he client

module 108 operates to enable or disable the software application 102 pursuant to

a response from a license server 110 in the context of license validity inquiries.

Id. at 7:43-51 (emphasis added).

VII. LEVEL OF ORDINARY SKILL IN THE ART


As set forth in the Declaration of Dr. Alexander, a person of ordinary skill in

the art of the 868 Patent would have had a range of knowledge roughly

equivalent to the knowledge and/or training of a person holding the degree of

Bachelor of Science in Electrical Engineering, Computer Science, or Computer

Engineering, or equivalent, and at least two years of experience in designing

hardware and/or software for electronic and computer security systems. A higher

level of education may make up for less experience. Decl. (EX1003) at 21-22.

VIII. CLAIM CONSTRUCTION


Claim terms of a patent in inter partes review are given the broadest

reasonable construction in light of the specification. 37 C.F.R. 42.100(b).

Claim constructions appropriate for these proceedings may be different than claim

constructions appropriate in a federal district court. Thus, the claim constructions

proposed in this Petition do not necessarily reflect the constructions that Petitioner

believes should be adopted by a district court. Any term not explicitly construed

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below should be interpreted in accordance with its plain and ordinary meaning

under the broadest reasonable construction.

A. component (claims 18, 19, 40, and 44)


The term component, as used in the868 Patent, should be construed as a

part of a system implemented either as software, firmware, or hardware or a

combination thereof. Decl. at 48-52. This construction comes from the

specification of the 868 Patent, which states that:

In a preferred implementation of this embodiment, the server


and client components are implemented in software and the
embedded agents are implemented as hardware logic circuits.
However, all three of these components may be implemented
either as software routines, firmware routines, hardware
circuits, or as a combination of software, firmware, and
hardware.

868 Patent at 5:56-63; see also 6:66-67 (FIG. 3 is a block diagram of example

hardware and software components .). The proposed construction is also

consistent with Patent Owners interpretation of the term. See, e.g., EX1007 (Joint

Claim Construction Statement) (a part of a system implemented either as

software, firmware, or hardware or a combination thereof). Accordingly, the

word component may be used to refer to either a software program or a piece of

hardware, while a multicomponent system refers to a system made up of

multiple components (e.g., software and/or pieces of hardware), such as a typical

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computer system. Decl. at 52. Indeed, claim 45 of the 868 Patent expressly

states that the multi-component system is a computer system.

B. agent (claims 1, 2, 18, 19, 40, and 44)


The term agent, as used in the 868 Patent, should be construed as a

processing entity implemented in hardware or software, which can be directed to

enable or disable a component or device. Decl. at 53-56; see also 868 Patent

at 3:51-55. This construction comes directly from the specification of the 868

Patent, which states that: Agents are embedded within various devices within the

PC. The agents are either hardware-implemented logic circuits included in the

devices or firmware or software routines running within the devices that can be

directed to enable and disable the devices in which they are embedded. 868

Patent at 3:51-55 (emphasis added); see also 4:6-21; 5:7-16; 5:56-63.

One difference between the definition in the specification, and the one

proposed by Petitioner is that the proposed definition allows the agent to enable or

disable the component or device. The component or device clarification

comes directly from claims of the 868 Patent, which require the agent to enable

the device (claim 1) or enable/disable the component (claim 44).

Another difference is the reference to a processing entity, a phrase that

does not appear in the specification of the 868 Patent, but was set forth as part of

an express definition by the Applicants during prosecution of the related 765

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Patent. See EX1002 (Response to Office Action dated November 6, 2002) at 5

(In computing, an agent refers to a processing entity that operates according to a

hardware-implemented or stored firmware or software program.). 3 The phrase

processing entity simply refers to a stored process or set of instructions, whether

implemented in hardware or software. Decl. at 56. Here, it should be clear that a

processing entity implemented in software simply refers to a software routine or

other composition of code. Decl. at 56. Indeed, the 868 Patent explicitly states

that [a]n embedded agent is embedded as a firmware or software routine that

runs within the internal component of the PC. The client component, when present,

runs as a software process on the PC. 868 Patent at 5:12-16; 5:56-63 (agents

may be implemented as software routines); see also 3:52-55.

C. embedded (claims 1, 18, 19, and 44)


The claims of the 868 Patent require for the agent to be embedded in

either the device (e.g., claim 1) or the component (e.g., claim 44). The word

embedded, as used in the 868 Patent, should be construed as contained,

located, included, or incorporated. Decl. at 57-59. The specification of the

3
During litigation, SoftVault proposed to define agent as a processing entity

that acts on behalf of another processing entity, which is inapposite. See, e.g.,

EX1007 (Joint Claim Construction Statement).

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868 Patent uses all of these words as synonyms for embedded. For example,

the 868 Patent Specification teaches that: the agents are either hardware-

implemented logic circuits included in the devices or firmware or software

routines running within the devices 868 Patent at 3:52-55 (emphasis added).

The specification further explains that Software may be manufactured to require

authorization from a server via an embedded agent either located within the disk

drive on which the software is stored or located within the software itself. Id. at

4:21-25; see also 5:12-16 (included); 6:52-55 (included); 29:27-29

(contained); 30:16-20 (incorporated); 31:14-17 (incorporated). Petitioners

proposed construction is also consistent with the construction that SoftVault

proposed in the co-pending litigation. See, e.g., EX1007 (embedded means

contained or incorporated in).

D. coupled to (claims 1 and 44)


Certain claims of the 868 Patent require that a server [be] coupled to the

embedded agent. See, e.g., claim 44. The phrase coupled to, as used in the

868 Patent, should be construed as connected together via a communication

medium. Decl. at 60-63. This definition comes directly from the specification

of the 868 Patent, which teaches that the server is coupled to embedded agents

via a communications medium. 868 Patent at 3:60-62; 5:10-12. The 868 patent

discloses several methods by which the agent and server may be connected. For

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example, the agent and server may be connected via a local area network (LAN) or

wide area network (WAN). Id. at 6:30-36. In another embodiment, the 868 patent

describes communication between the agent and server using optical or radio

signals. Id. at 8:31-34. The patent also describes other wireless methods of

communication, including microwave or satellite links. Id. at 31:58-61. The term

coupled to should also be understood to encompass any type of communication

medium through which the agent and server communicate.

E. handshake operation (claims 1, 19, and 44)


The phrase handshake operation, as used in the 868 Patent, should be

construed as an exchange of messages that results in an agreement that the

embedded agent is authorized. Decl. at 64-71. The proposed construction is

based on statements made by the Applicants during prosecution of the related 765

Patent, where the Applicants defined the handshake operation as follows:

The Websters New World Dictionary (Simon and Shuster,


1982) defines a handshake, in part, as an agreement. In one
embodiment of the claimed invention, the handshake operation
involves an exchange of messages between a server and an
embedded agent by which secret information is exchanged, and
which results in an agreement between the server and the
embedded agent that the embedded agent is authorized.
EX1002 (Applicants November 13, 2002 Office Action Response) at 5-6

(emphasis added). Applicants then distinguished the prior art Pagliaroli reference

by arguing that Pagliaroli neither teaches nor suggests a handshake operation

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comprising an exchange of messages that leads to authorization of an embedded

agent. Id. Thus, under a broadest reasonable interpretation standard, the

construction of the term handshake operation must at least be as broad as the

definition set forth by the Applicants during prosecution. See Toro Co. v. White

Consolidated Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (where a patent

applicant defines a term, that definition will control). 4

In further explaining the meaning of the handshake operation during

prosecution, Applicants pointed to the examples of the handshake operation

disclosed in Figures 7A-F and 8A-F. EX1002 at 5-6; see also 868 Patent at

Figure 4. Petitioners proposed construction is consistent with the disclosure of

these figures and examples. It should also be understood that, according to the

868 Patent, The handshake mechanism can be implemented with any number of

different communication message protocols, with any number of different types of

databases, and with any number of different strategies for handling potential error

4
During litigation, SoftVault proposed to define handshake operation as an

agreement confirming the identity of each to the other. See EX1007. To the

extent this construction is narrower than, or does not encompass, the definition the

Applicants publicly set forth during prosecution, under the broadest reasonable

interpretation standard, the prosecution history definition should be adopted.

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and alarm exception. 868 Patent at 28:47-51; 10:55 to 15:6; Figures 6A-9B. This

disclosure is additional evidence that the handshake operation is a broad term.

IX. THE CHALLENGED CLAIMS ARE UNPATENTABLE


Pursuant to Rule 42.104(b)(4)-(5), the following sections detail the grounds of

unpatentability, the limitations of claims 1, 2, 18, 19, 40, and 44 of the 868 Patent,

and how these claims are anticipated and/or obvious over the prior art.

A. The (Minor) Differences Between the Challenged Claims


Claims 1, 19, and 44 of the 868 Patent are independent. Claims 2 and 18

depend from claim 1. Claim 40 depends from claim 19. For comparison purposes,

independent claims 1, 19 and 44 are provided below, with certain differences shown

in bold. As shown, claim 1 is directed to a system for preventing theft or misuse of

a computer system where an embedded agent is embedded in a device:

Claim 1
A system for preventing theft or misuse of a computer system, the system
comprising:
a computer system having a device;
an agent embedded in the device that, when authorized, enables operation of the
device and that, when not authorized, disables operation of the device; and
a server coupled to the embedded agent that, by exchanging a number of messages
with the embedded agent that together compose a handshake operation, authorizes
the embedded agent to enable operation of the device.

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Claims 19 and 44 are directed to a method and system for controlling

operation of a component(s) of a system, where an embedded agent is embedded

in a component. The only substantive difference between claim 19 and 44 is that

claim 19 requires enabling operation of the component for a period of time.

Claim 19
A method for enabling and disabling operation of a component of a system, the
method comprising:
embedding an agent within the component;
establishing a communications link between the embedded agent and a server; and
when the component is to be enabled, exchanging a number of messages between the
server and the embedded agent that together compose a handshake operation that
results in authorization of the embedded agent to enable operation of the component
for a period of time.
Claim 44
A control system for controlling operation of components within a multi-
component system, the control system comprising
an agent embedded in a component of the multi-component system that, when
authorized, enables operation of the component and that, when not authorized,
disables operation of the component
a server coupled to the embedded agent that, by exchanging a number of messages
with the embedded agent that together compose a handshake operation, authorizes
the embedded agent to enable operation of the component.
In practice, SoftVault has asserted claim 1 against hardware manufacturers,

while asserting claims 19 and 44 against software manufacturers.

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B. Ground I: Claims 1, 2, 18, 19, and 44 are anticipated by Collins

1. Independent Claim 1 is anticipated by Collins

Claim 1
A system for preventing theft or misuse of a computer system, the system
a)
comprising:
b) a computer system having a device;
an agent embedded in the device that, when authorized, enables operation of
c)
the device and that, when not authorized, disables operation of the device; and
a server coupled to the embedded agent that, by exchanging a number of
d) messages with the embedded agent that together compose a handshake
operation, authorizes the embedded agent to enable operation of the device.

a) A system for preventing theft or misuse of a computer system, the


system comprising
To the extent the preamble is deemed limiting, Collins discloses a system for

preventing theft or misuse of a computer system. Decl. at 84-85. Specifically,

Collins is titled Immobilization Protection System for Electronic Products and

Components, and relates to electronic security systems to address the problem of

theft of complex electronic products, including computers. Collins (EX1004) at

page 1. According to Collins, This invention is concerned with a technique for

rendering electronic products and components inoperative in the hands of anyone

but the rightful owner. The technique allows stolen and recovered products and

components to be identified and traced to their rightful owner(s). Id.

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b) a computer system having a device


Collins discloses a personal computer (PC) system containing system

critical components 60 [and] 61 and a hard disk drive HDD 63. Collins at page 4

and Figure 2. Collins computer system is illustrated in Figure 2 (below), which

shows a PC Housing that includes a hard disk drive (HDD) 63, a PC

motherboard 70 that includes memory modules (SIMM) 60, and a processor

(CPU) 61. Collins at pages 4-5.

The personal computer system illustrated in Figure 2 is the recited computer

system and components 60, 61, and 63 are each examples of the claimed device.

Decl. at 86-88.

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c) an agent embedded in the device that, when authorized, enables


operation of the device and that, when not authorized, disables
operation of the device
Collins discloses an agent embedded in the device that, when authorized,

enables operation of the device and that, when not authorized, disables operation of

the device. Decl. at 89-97. As discussed in Section VIII above, an agent

should be understood to refer to a processing entity implemented in hardware or

software, which can be directed to enable or disable a component or device.

Collins discloses that [e]lectronic products and components are designed with an

embedded electronic immobilization protection device (IPD). From power on, the

IPD controls the useful operation of the product or component. Collins at page 1

(emphasis added). The IPD of Collins corresponds to the claimed agent. Decl. at

90. Specifically, the IPD is a processing entity that operates according to a stored

process or set of instructions. In Collins, the IPDs are programmed by the

manufacturer or retailer with a unique part number (PN), one or more cryptographic

functions, and cryptographic keys. Collins at page 1. The programmed functions

of the IPD are shown in Figure 1 of Collins. The IPD is implemented in hardware

either as an additional component that is bonded or mounted on a circuit board, or

as additional logic integrated at mask (or multi-chip-module) level. Collins at page

1. Finally, as discussed in detail below, the IPD can be directed to enable or disable

a component or device according to Collins.

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In Collins, the IPD (i.e., agent) is embedded in the device as required by

the claim. Decl. at 91-92. According to Collins, [t]he IPD is embedded within

the product at one of three levels: (i) an additional component inside the case

mounted on a printed circuit board; (ii) an additional component bonded to one or

more essential or high value components, or (iii) additional logic integrated at

mask (or multi-chip-module) level to essential or high value integrated circuits.

Collins at page 1 (emphasis added). Figure 2 also illustrates IPDs 71 embedded in

each of devices 60, 61, and 63. Collins at Figure 2 and page 4.

In Collins, the IPDs (i.e., embedded agents) enable operation of their

respective devices when authorized, and disable operation of their respective devices

when not authorized. Decl. at 93-97. Specifically, Collins teaches that the IPDs

are authorized (or not authorized) by a security service provider (SSP). Collins at

page 1. Collins discloses an authorization procedure where, after a communication

link between the IPDs and the SSP is established . . . each IPD sends its PN together

with a cryptographically secure challenge. If the product or component containing

an IPD has not been reported stolen, then the SSP replies with a valid

cryptographically secure response, otherwise it replies with an invalid response . .

. If the IPD receives an invalid response, or when a time limit has elapsed without

a valid response, then it renders the product or component inoperative. If the IPD

receives a valid response, inside the time limit, then it allows the product or

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component to function normally. Collins at pages 1-2 (emphasis added); see also

Abstract. Collins further teaches that [a]ny component in the PC system that does

not belong to its rightful owner receives an invalid response from the SSP. In this

case, the IPD will disable the component after an additional short delay (to allow the

computer fail safe). If all responses are valid, then the computer continues to

function normally and with non-critical functions enabled. Collins at page 4

(emphasis added). Collins IPDs are each an agent that when not authorized,

disables operation of the device, because they render their respective device

inoperative when they do not receive a response from the SSP within the time limit,

or when they receive an invalid response from the SSP. Decl. at 97. Likewise, the

IPDs in Collins are each an agent that when authorized, enables operation of the

device, because the IPDs allow their respective device to function normally when

they receive a valid response within the time limit from the SSP. Decl. at 96.

d) a server coupled to the embedded agent that, by exchanging a


number of messages with the embedded agent that together
compose a handshake operation, authorizes the embedded agent to
enable operation of the device
Collins discloses a server coupled to the embedded agent that, by exchanging

a number of messages with the embedded agent that together compose a handshake

operation, authorizes the embedded agent to enable operation of the device. Decl. at

98-116. Indeed as summarized in the Abstract of Collins:

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At power on, and periodically thereafter, the IPD sends a


cryptographically secure challenge to the SSP. If a part has
not been reported stolen, then the SSP replies with a valid
cryptographically secure response, otherwise it replies with
an invalid response. If the IPD receives an invalid
response, or when a limited time has elapsed without a
response, it renders the part inoperative. A valid response,
inside the time limit, allows the part to function normally.
Collins at Abstract.

Collins discloses a server as required by the claim. Decl. at 98-101.

Specifically, Collins discloses that the IPD (i.e., agent) communicates with a

security service provider (SSP). Collins at page 1, Abstract. According to

Collins, there are several different types of connection arrangements for the SSP that

include a server. For example, Collins teaches that the SSP can provide its users

with several modes of connection: (i) circuit or packet access to a central security

server; (ii) packet access to a local security server. Collins at page 2 (emphasis

added); see also page 1, Abstract; see also Figures 6 and 7.

The SSP (i.e., server) is coupled to the IPDs (i.e., embedded agents),

because Collins describes the SSP as being connected together with the IPDs via

a communication medium. Collins at page 1; Decl. at 102-105. Collins also

describes the connection between the IPDs and the SSP as a communications link.

Collins at page 1. Figures 4-7 of Collins each show implementations where the SSP

(23, 14, 5, and 101, respectively) is connected with PCs that contain

devices/components with IPDs (20, 10, 1, and 102-103, respectively) via a public

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switched telephone network (PSTN) 22 and wide area networks (WAN) 13, 4 5,

and 100, respectively. Decl. at 103-105; Collins at Figures 4-7 and page 5. The

PSTN and WAN are examples of a communications medium. Decl. at 103. Figure

4 also shows a modem 21, which is used for communication purposes.

The SSP exchanges a number of messages with the IPD (i.e., embedded

agent) that together compose a handshake operation. Decl. at 106-110. As

discussed in Section VIII above, the phrase handshake operation should be

construed as an exchange of messages that results in an agreement that the

5
Collins Figure 6 labels its WAN as 4, but the corresponding written
explanation misidentifies it as WAN 2. See Collins at Figure 6 and page 5.

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embedded agent is authorized. Collins discloses an approach where [o]nce the

link is established, each IPD sends its PN together with a cryptographically secure

challenge. Collins at page 2, Abstract. The SSP receives the challenge and

confirms that the product or component containing an IPD has not been reported

stolen. Collins at page 2, Abstract. Once confirmed, the SSP replies with a valid

cryptographically secure response, and if not confirmed, the SSP replies with an

invalid response, which can be either (i) not the valid response or (ii) no

reply. Collins at page 2, Abstract. Based on the response received from the SSP,

the IPD either enables or disables the product or component. Collins at page 2,

Abstract. The exchange of challenge and response messages between the IPD

and SSP constitutes the claimed handshake operation because it results in an

agreement that the embedded agent is authorized. Decl. at 106-110.

The SSP in Collins authorizes the IPD (i.e., embedded agent) to enable

operation of the device. Decl. at 111-116. Specifically, if the IPD receives a

valid response from the SSP, inside the time limit, then it allows the product or

component to function normally. Collins at page 2, Abstract.

Collins further discloses specific algorithms and cryptographic functions that

can be used to generate the challenge and response messages and also verify the

identity of the SSP server and the IPD (i.e., embedded agent.). Collins at pages 3-

4 and Figure 1. For convenience, FIG. 1 is reproduced below.

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As shown in FIG. 1, and described in Collins, the IPDs can incorporate means

that allow the server and agent to verify each others identity. According to

Collins:

If an SSP wishes to filter challenges from rogue users, then


IPDs must incorporate a means for the SSP to validate
challenges. (An attacker, wishing to deny SSP service from
legitimate users, can flood SSP connections with rogue
challenges.) One such means is to send an authenticator,
An, derived from the challenge, Cn, using a cryptographic
function 43 with the key, K1 stored in ROM. At the SSP, the

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received challenge is fed into cryptographic function 44 with


the key K1 obtained from a database lookup using the part
number P. The functions 43 and 44 are identical. If the output,
VAn1 of 44 and the received authenticator (from the IPD) are
equal then the challenge, Cn, is valid. In this case, the SSP
feeds the received challenge into a cryptographic function 45
with the key K2, obtained from a database lookup using P. The
output of 45 is the cryptographically secure response, Rn.
Returning to the IPD, Cn is fed into a cryptographic function
46 with the key K2, stored in ROM. The functions 45 and 46
are identical. If the output, Vt, of 46 and the received
response (from the SSP) are equal (see 49), then the
product or component is allowed to function and 40 is loaded
with the state Sn+l.
Collins at 4 (emphasis added). Using the above-described authentication method the

system can determine that the exchanged messages are valid. Decl. at 116.

Specifically, authenticator An of Collins is used by the SSP (server) to verify that

the IPD (agent) making the authorization request should, in fact, be authorized.

Likewise, the SSPs response to the IPD (Rn output from box 45 in FIG. 1) is

encrypted by key K2, which is known to both the IPD and the SSP. The IPD uses

key K2 (at cryptographic function 46) to confirm that the response (Rn) is authentic.

Indeed, according to Collins, the embedded and cryptographically secure natures of

IPDs must be sufficient so that individuals outside the realms of approved

manufactures and the SSPs, including the rightful owner, are unable to provide a

method, or gain information, to by-pass or enable IPDs without a valid response

from the said SSP. Collins at 3.

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2. Dependent Claim 2 is anticipated by Collins

Claim 2
2 The system of claim 1 wherein the device contains a logic circuit and the
embedded agent is implemented as a logic circuit within the logic circuit of
the device.

Collins discloses a system wherein the device contains a logic circuit and the

embedded agent is implemented as a logic circuit within the logic circuit of the

device. Decl. at 117-121. As described above in connection with claim 1,

components 60 (SIMM memory), 61 (SIMM memory), and 63 (HDD) of Collins

are each examples of the claimed device, and IPDs 71 (i.e., agents) are

embedded in each of those devices. IX.B.1(b) and (c), supra. Collins discloses

that the IPDs can be embedded in the respective devices in a number of ways,

including as additional logic integrated at mask (or multi-chip-module) level to

essential or high value integrated circuits. Collins (EX1004) at page 1

(emphasis added). Those integrated circuits contain logic circuits, as expressly

disclosed by Collins reference to the IPD being additional logic for the circuit.

Decl. at 120; Collins at page 1. According to Collins, this embedding method

provides highest level of deterrent because the IPD is truly integral making by-

pass intractable. Collins at page 1. Therefore, Collins discloses a device that

contains a logic circuit and the embedded agent is implemented as a logic circuit

within the logic circuit of the device. Decl. at 121.

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3. Dependent Claim 18 is anticipated by Collins

Claim 18
18 The system of claim 1 wherein embedded agents are embedded in additional
components of the computer system including a CPU and memory devices,
and wherein embedded agents are implemented as one of hardware logic
circuits, firmware routines, and software routines that run within the device
or component within which the embedded agents are embedded.

Collins discloses that the embedded agents are embedded in additional

components of the computer system including a CPU and memory devices. Decl.

at 122-129. Specifically, according to Collins, each product can include one or

more IPDs. Collins (EX1004) at page 2. For example, Figure 2 of Collins below

shows IPDs 71 (embedded agents) embedded in both memory modules (SIMM)

60, which are each memory devices, and a processor (CPU) 61, which Collins

even refers to as a CPU or central processing unit. Collins at pages 4-5.

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The memory modules 60 and the CPU 61 are all components of the

computer system. Decl. at 122, 124-125. As described in Section VIII above,

the term component, should be construed as a part of a system implemented

either as software, firmware, or hardware or a combination thereof. Here, the

language of claim 18 itself identifies CPU and memory devices as components

and Figure 2 (above) shows those memory modules 60 and the CPU 61 as part of a

personal computer (PC) system. Collins at page 4 and Figure 2. The memory

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modules 60 and the CPU 61 are implemented as hardware, and integrated on the

PC motherboard 70. Id; Decl. at 127-129.

The memory modules 60 and processor 61 are additional components

embedded with agents 71 given that, for example, hard disk drive HDD 63 is also a

component that is embedded with an agent (IPD 71). Decl. at 125; Collins at

page 4 and Figure 2.

Collins also discloses that the embedded agents are implemented as

hardware logic circuits that run within the device or component within which the

embedded agents are embedded. Decl. at 124-128. Specifically, the IPDs 71

(i.e., the embedded agents) are shown to be embedded within the memory

modules 60 and the CPU 61 in Figure 2. The IPDs 71 are implemented as

hardware logic circuits either as (ii) an additional component bonded to one or

more essential or high value components, or as (iii) additional logic integrated at

mask (or multi-chip-module) level to essential or high value integrated circuits.

Collins at page 1; Decl. at 127. According to Collins, When the PC is turned

on, IPDs in system critical components 60 61 are enabled, for a limited period of

time, allowing the computer to function normally. This time is sufficient for the PC

to load its operating system, establish communication with the SSP, to send

challenges and receive responses. Collins at page 4. Collins also teaches that

each of the IPDs issues its own challenges and that Any component in the PC

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system that does not belong to its rightful owner receives an invalid response

from the SSP. In this case, the IPD will disable the component after an additional

short delay (to allow the computer fail safe). Collins at page 4.

4. Independent Claim 19 is anticipated by Collins


The method of claim 19 corresponds to the system of claim 1, with minor

differences in claim language (e.g., referring to a component instead of a

device). As discussed above, the claim term component, refers to any part of

a system implemented either as software, firmware, or hardware or a combination

thereof. Accordingly, claim 19 is anticipated by Collins for the same reasons set

forth with respect to claim 1 above, as well as based on the following discussion.

Claim 19
A method for enabling and disabling operation of a component of a system, the
a)
method comprising:
b) embedding an agent within the component;
establishing a communications link between the embedded agent and a server;
c)
and
when the component is to be enabled, exchanging a number of messages
between the server and the embedded agent that together compose a handshake
d)
operation that results in authorization of the embedded agent to enable
operation of the component for a period of time.

a) A method for enabling and disabling operation of a component of a


system, the method comprising
To the extent the preamble is deemed limiting, Collins discloses a method

for enabling and disabling a component of a system. Decl. at 130-136. For

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example, Collins discloses that Electronic products and components are designed

with an embedded electronic immobilization protection device (IPD). From power

on, the IPD controls the useful operation of the product or component. Collins

(EX1004) at page 1 (emphasis added). In Collins, memory modules 60, CPU 61,

and HDD 63 are all examples of components of a personal computer (PC)

system. See IX.B.1(c) and (d) and IX.B.3 supra. Indeed, the 868 Patent

similarly identifies memory modules, CPU and hard drives as examples of

components within a PC:

Internal components of the PC include a central processing unit


(CPU) 214; a random access memory 216; a system
controller 218; a hard disk 220; and a number of device
controllers 222, 224, 226, 228, and 230 connected to the system
controller 218 directly through a high speed bus 232, such as a
PCI bus, or through a combination of the high speed bus 232, a
bus bridge 234, and a low speed bus 236 such as an ISA bus.
868 Patent at 6:10-22; see also Figure 2.

As explained in connection with claim 1 above, the method of Collins uses

the IPDs 71 embedded in the memory modules 60, CPU 61, and HDD 63 to enable

or disable their operation. See IX.B.1(c) and (d) and IX.B.3, supra; see also

Collins at pages 3-4; Abstract; Figure 2.

b) embedding an agent within the component


Collins discloses this claim element for at least the same reasons that it

discloses the claim 1 requirement for an agent embedded in the device. See

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IX.B.1(c), supra. Collins memory modules 60, CPU 61, and HDD 63 are each

components, while IPDs 71 correspond to the claimed embedded agents. See

IX.B.1(b); IX.B.3, supra; see also Collins at page 1, 3-4, Abstract; Figure 1;

see also Decl. at 137-140.

c) establishing a communications link between the embedded agent


and a server
For at least the reasons set forth with respect to claim 1 above, Collins

discloses establishing a communications link between the embedded agent and a

server. See IX.B.1 (d) supra; Decl. at 141-150. The difference between claim

1 and claim 19 is that claim 1 requires the server to be coupled to the embedded

agent while claim 19 requires establishing a communications link between the

embedded agent and a server. This is a difference without distinction, as Collins

expressly refers to the connection between the IPDs and the SSP as a

communication link. Collins at pages 1 and 5. As discussed in connection with

claim 1 above, the IPDs 71 of Collins correspond to the claimed agents, while

the SSP of Collins includes the claimed server. Collins at pages 1 and 5. Collins

teaches that the communication link between the IPDs and the SSP is established

[w]hen a product or component is powered on. Collins at page 1.

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d) when the component is to be enabled, exchanging a number of


messages between the server and the embedded agent that together
compose a handshake operation that results in authorization of the
embedded agent to enable operation of the component for a period
of time
Collins discloses this claim element for at least the same reasons that it

discloses the claim 1 requirement of a server coupled to the embedded agent that,

by exchanging a number of messages with the embedded agent that together

compose a handshake operation, authorizes the embedded agent to enable

operation of the device. See IX.B.1(d), supra; see also Decl. at 151-168.

Collins also teaches that the embedded agent enables operation of the

component for a period of time: At power on, and periodically thereafter, the IPD

sends a cryptographically secure challenge to the SSP A valid response,

inside the time limit, allows the part to function normally. Collins at Abstract;

Decl. at 163-168. Specifically, Collins discloses that the challenge

response cycle is repeated periodically, eg. every eight hours. Collins at page 2

(emphasis added). Collins additionally states that [t]he duration of this interval

can be varied to suit organizational or operational requirements. Collins at page 2

(emphasis added). As explained in at least IX.B.1(c) and (d) above, based on

the response to the challenge received by the IPD from the SSP, or the lack thereof,

the IPD either enables or disables the product or component. See also Collins at

page 2. Because the component is only enabled and functions normally for a

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customizable period of time, before requiring another authorization from the server

via a challenge-response cycle, it satisfies this claim limitation. Decl. at 168.

5. Independent Claim 44 is anticipated by Collins


The system of claim 44 is almost identical to that of claim 1, with only

minor differences in claim language (e.g., referring to a component instead of a

device). Thus, claim 44 is anticipated by Collins for the reasons set forth with

respect to claims 1 and 19 above, as well as based on the following discussion.

Claim 44
A control system for controlling operation of components within a multi-
a)
component system, the control system comprising:
an agent embedded in a component of the multicomponent system that, when
b) authorized, enables operation of the component and that, when not authorized,
disables operation of the device; and
a server coupled to the embedded agent that, by exchanging a number of
messages with the embedded agent that together compose a handshake
c)
operation, authorizes the embedded agent to enable operation of the device
[component]. 6

a) A control system for controlling operation of components within a


multi-component system, the control system comprising
To the extent the preamble is deemed limiting, Collins discloses a system for

controlling operation of components within a multi-component system. See

IX.B.1(a), (c),(d); IX.B.4(a), supra; see also Decl. at 170-172. Collins

discloses that Electronic products and components are designed with an

6
As changed by the Certificate of Correction that issued on July 18, 2006.

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embedded electronic immobilization protection device (IPD). From power on, the

IPD controls the useful operation of the product or component. Collins

(EX1004) at page 1 (emphasis added). The memory modules 60, CPU 61, and

HDD 63 discussed above are all examples of components of the Collins

personal computer (PC) system. See IX.B.1(b) and IX.B.3, supra; Decl. at

171. Collins personal computer (PC) system, is a multi-component system

because it includes multiple components, including memory modules 60, CPU 61,

HDD 63, and others. Decl. at 172.

b) an agent embedded in a component of the multicomponent system


that, when authorized, enables operation of the component and that,
when not authorized, disables operation of the device
Collins discloses this claim element for at least the same reasons that it

discloses the claim 1 requirement of an agent embedded in the device that, when

authorized, enables operation of the device and that, when not authorized, disables

operation of the device. See IX.B.1(c), supra; see also Decl. at 173-183. As

discussed above, and shown in Figure 2, components such as memory modules 60,

CPU 61, and HDD 63 can each be embedded with agents (IPDs 71), and the IPDs

can then either enable or disable the respective component. See IX.B.1(c) and

(d), supra; IX.B.4(d), supra; see also Collins at pages 3-4; Abstract; Figure 2.

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c) a server coupled to the embedded agent that, by exchanging a


number of messages with the embedded agent that together
compose a handshake operation, authorizes the embedded agent to
enable operation of the component
Collins discloses this claim element for at least the same reasons that is

discloses the claim 1 requirement of a server coupled to the embedded agent that,

by exchanging a number of messages with the embedded agent that together

compose a handshake operation, authorizes the embedded agent to enable

operation of the device. See IX.B.1(d), see also IX.B.4(c) and (d), supra; see

also Decl. at 184-203.

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C. Ground II: Claims 19 and 44 are anticipated by Coley


Claims 19 and 44 of the 868 Patent are independent. Claims 19 and 44 are

directed to a method and system, respectively, where an embedded agent is recited

as being embedded in a component.

The proposed grounds of rejection under Coley are not redundant to the

proposed rejection under Collins because Coley addresses the so-called software

embodiment of the 868 Patent. The purported software embodiment of the 868

Patent is best understood through the lens of SoftVaults litigation assertions with

respect to claims 19 and 44. For example, in relevant litigation filings, SoftVault

argued that its 868 Patent may be used in software activation to ensure that only

licensed copies of a software application can be used on a computer. As a specific

example, SoftVault has asserted at least Claims 19 and 44 of the 868 Patent against

Adobes so-called Product Activation features, insisting that:

15. Adobe includes the product activation features in Accused


Products to enforce licensing policies and ensure that only
authorized copies of Adobe software applications may be
installed and used on a client computer. The product activation
feature requires that a portion of the code in the installed
Accused Products communicate with an Adobe activation
server over the Internet to activate (or enable) the application.
Upon installation of an Adobe application, the product
activation code in the application communicates with the
activation server. The activation server exchanges messages
constituting a handshake operation with the product activation
code in the application to determine whether the license for the
application is valid. When the product activation code in the
application is authorized by the license server, it enables the

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application in which it is embedded to operate normally. When


the product activation code is not authorized by the license
server, the application is disabled.

EX1006 (Adobe Complaint) at 15. The same product activation features are

disclosed in Coley, as discussed below.

1. Independent Claim 19 is anticipated by Coley

Claim 19
a) A method for enabling and disabling operation of a component of a system,
the method comprising:
b) embedding an agent within the component;
c) establishing a communications link between the embedded agent and a
server; and
d) when the component is to be enabled, exchanging a number of messages
between the server and the embedded agent that together compose a
handshake operation that results in authorization of the embedded agent to
enable operation of the component for a period of time.

a) A method for enabling and disabling operation of a component of a


system
To the extent the preamble is deemed limiting, Coley discloses a method for

enabling and disabling operation of a component of a system. Decl. at 205-211.

Specifically, Coley is directed to methods and apparatuses for automatically

tracking use of a software and also for determining whether the software is validly

licensed and enabling or disabling the software accordingly. Coley (EX1005) at

Abstract. To accomplish these functions, Coley teaches a system that includes a

personal computer 100 that has a client application 103 residing on a hard drive 104.

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The client application 103 is comprised of a software application 102 and a client

module 108. Coley at 7:43-48; Figure 1. According to Coley, [t]he client module

108 operates to enable or disable the software application 102 pursuant to a

response from a license server 110 in the context of license validity inquiries. Coley

at 7:43-51 (emphasis added). In Coley, the personal computer corresponds to the

claimed system, and the software application 102 residing on the hard drive of

the PC is an example of the claimed component. Decl. at 208.

b) embedding an agent within the component


Coley discloses embedding an agent within the component. Decl. at 209,

212-214. As discussed in Section VIII above, the term component should be

construed as a part of a system implemented either as software, firmware, or

hardware or a combination thereof. The term agent should be construed as a

processing entity implemented in hardware or software, which can be directed to

enable or disable a component or device. The word embedded should be

construed as contained, located, included, or incorporated.

Coley discloses that the client application 103 is comprised of a software

application 102 and a client module 108. Coley at 7:46-48. The client module

108 of Coley corresponds to the claimed agent. Decl. at 208, 212.

Specifically, the client module 108 is a program, application, or like composition

of code that is preferably nested in a compiled version of a software application (i.e.,

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to form a client application). However, the client module can, in alternative

embodiments of the invention, be attached to a previously compiled software

application. Coley at 4:14-22. According to Coley, [t]he client module 108 can be

code nested within the software application 102 (Coley at 7:65-67), which is

another way to say that the code is embedded in the software application and

satisfies the present claim limitation. Decl. at 209, 213. Specifically, Coley

teaches inserting licensing system code into a pre-compiled version of a software

application and then compiling that application into a single executable client

application. However, in accordance with another embodiment of the invention, the

licensing system can be provided as a module that is inserted into to an existing

software structure on a computer network. Coley at 16:59-66. Finally, The client

module 108 operates to enable or disable the software application 102 pursuant to a

response from a license server 110 in the context of license validity inquiries. Coley

at 7:43-51 (emphasis added).

As discussed above, the disclosure of the 868 Patent explicitly confirms that

an embedded agent can be embedded as a firmware or software routine that runs

within the internal component of the PC. The client component, when present, runs

as a software process on the PC. 868 Patent at 5:12-16; see also 868 Patent at

5:56-63 (agents may be implemented as software routines); 868 Patent at 3:52-

55. Moreover, as dependent claim 40 of the 868 Patent (which depends from claim

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19) explains: the component of the system is an executing software program,

wherein the system is a computer system, and wherein the embedded agent is

implemented as a software subcomponent of the software program. Since claim

40 depends from claim 19, claim 19 must be broader than, and encompass the

subject matter of claim 40. For all these reasons, the client module 108 of Coley

corresponds to the claimed agent.

c) establishing a communications link between the embedded agent


and a server
Coley teaches establishing a communications link between the embedded

agent and a server. Decl. at 215-217. Specifically, Coley discloses a license

server 110 (server) that is in communication with the client module 108

(embedded agent), where [t]he client module 108 operates to enable or disable

the software application 102 pursuant to a response from a license server 110 in the

context of license validity inquiries. Coley at 7:43-51; see also 4:26-32; 8:1-14. As

also shown in Figure 2, the license validity checking process is initiated (step 202)

by utilizing a modem to form an Internet connection between the computer 100 and

a licensing server (step 204). Coley at 8:60-63(emphasis added). According to

Coley, the license server communicates with the client module 108 over a public

network, such as the internet. Coley at 4:23-26; 7:58-65.

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d) when the component is to be enabled, exchanging a number of


messages between the server and the embedded agent that together
compose a handshake operation that results in authorization of the
embedded agent to enable operation of the component for a period
of time
Coley discloses exchanging a number of messages between the server and the

embedded agent that together compose a handshake operation that results in

authorization of the embedded agent to enable operation of the component for a

period of time. Decl. at 218-227. Specifically, when the software application is to

be enabled, the license server in Coley exchanges a number of messages with the

client module 108 (i.e., embedded agent) that together compose a handshake

operation. Decl. at 218-224. As discussed in Section VIII above, the phrase

handshake operation should be construed as an exchange of messages that results

in an agreement that the embedded agent is authorized. The details of Coleys

handshake operation are illustrated in Figure 2 and its associated description (8:54

to 9:22), where the client module 108 (embedded agent) exchanges a number of

messages (e.g., 210, 212, 220) with the license server 110 (server) leading to the

authorization (e.g., 218, 230) (or denial (e.g., 216, 226)) of the client module 108.

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As shown in Figure 2, the license validity checking process is initiated (step

202) by utilizing a modem to form an Internet connection between the computer 100

and a licensing server (step 204). Coley at 8:60-63; see also 21:45-65. Then,

[o]nce the connection is confirmed (step 206), the client module 103 forms a

license validity inquiry request message (step 208). Coley at 9:1-3; see also 4:23-

26; 7:58 to 8:15. In Coley, the validity request message may contain information

such as the application name, the application version number, a date/time stamp, the

name of a license server 110 (if several license servers are maintained by the

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software provider), and a hardware identifier, such as the IP address of the computer

100.). Coley at 9:1-8; 9:62 to 10:5. Coley uses this information (e.g., the

authorization ID) to properly encrypt the communications between the computer

and the server, to confirm the identity of the same, and to determine that the

exchanged messages are valid/authentic. See, e.g., Coley at 9:62 to 10:5; 15:1-11;

18:10 to 19:24.

Following the validity inquiry request the server determines whether the

client application is licensed (or not licensed) and instructs the client module

accordingly. Specifically,

[i]f it is determined that the client application is not licensed


(i.e., the database does not contain a corresponding license
record), the response sent by the licensing server does not allow
the client application to be enabled. If the client application is
licensed (i.e., the database contains a record of a license), the
response can allow the client application to be enabled, or re-
enabled.

Coley at 4:41-47; see also 8:1-15; 9:1-22. Once the client module 108 receives the

response from the license server 110, it will operate[] to enable or disable the

software application 102 (i.e., enable operation of the component). Coley at 7:43-

51; 10:42-49. The exchange of challenge and response messages between the

client module 108 and license server 110 results in an agreement that the embedded

agent is authorized, and the actual authorization of the client module 108 (i.e.,

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embedded agent) to enable operation of the software application (i.e.,

component). Decl. at 224.

Coley also teaches that embedded agent is authorized to enable operation of

the component for a period of time. Decl. at 224. For example, Coley teaches that:

The frequency of validation checks is application dependent. A


software designer can select when and how often validation
checks are to occur, if at all. The licensing system can be
configured in accordance with the needs of a particular
application. The software license can be validated, or enabled,
each time the application is brought up on a computer, or each
time a particular feature is used (e.g., printing). The software
license also can be validated in response to the expiration of a
timer (i.e., periodic validation).

Coley at 19:25-44 (emphasis added). According to Coley, once the client module

108 enables the software application 102 (Step 230), [t]he client module may, at

this point, start a timer (step 232) for periodic checking of license validity. Such a

validity check is automatically initiated when the timer expires (step 234). Coley at

9:42-51; Figure 2. In Coley, this periodic re-authentication is referred to as the

Validate License procedure and is used to determine[] whether a previously

enabled client application is still validly licensed. The procedure can be called at any

time. For instance, the initiation of the Validate License procedure can be in

response to a timer expiration (i.e., a periodic check) or at the appearance of a

system interrupt (e.g., printing is selected). Coley at 15:34-41.

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2. Independent Claim 44 is anticipated by Coley


The system of claim 44 is almost identical to the method of claim 19, with

only minor differences in claim language. Accordingly, claim 44 is anticipated by

Coley for at least the same reasons set forth with respect to claim 19 above, as well

as based on the following discussion.

Claim 44
A control system for controlling operation of components within a multi-
a)
component system, the control system comprising
an agent embedded in a component of the multi-component system that, when
b) authorized, enables operation of the component and that, when not authorized,
disables operation of the device [component]7
a server coupled to the embedded agent that, by exchanging a number of
c) messages with the embedded agent that together compose a handshake
operation, authorizes the embedded agent to enable operation of the component

a) A control system for controlling operation of components within a


multi-component system
Coley discloses this claim element for at least the reasons set forth above in

connection with claim 19. See IX.C.1(a), supra; see also Decl. at 229-232. The

difference between the preambles of claim 19 and claim 44 is that, while claim 19

recites enabling and disabling operation of a component of a system, claim 44s

preamble is directed to controlling operation of components within a multi-

component system. To the extent the preamble is even deemed to be limiting, there

is no substantive difference between the preambles of claim 19 and claim 44. In

7
As changed by the Certificate of Correction issued July 18, 2006.

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Coley, the personal computer corresponds to the claimed multi-component system,

while the software application 102 is an example of the claimed component.

Decl. at 232. An example of a PC (600) with multiple software applications (620,

622, 624, 626) is shown in Figure 6 of Coley, which is reproduced below.

Coley controls operation of components because, according to Coley, [t]he

client module 108 operates to enable or disable [i.e., control] the software

application 102 pursuant to a response from a license server 110 in the context of

license validity inquiries. Coley at 7:43-51 (emphasis added); 17:36-59 (The client

module 618 can enable, or validate, the client applications by communicating with a

licensing module in a file server 602.); Decl. at 231.

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b) an agent embedded in a component of the multi-component system


that, when authorized, enables operation of the component and that,
when not authorized, disables operation of the component
Coley discloses this claim element for at least the reasons set forth above in

connection with claim 19. See IX.C.1(b) and (d), supra; see also Decl. at 233-

238. In Coley, the client module 108 corresponds to the claimed agent. Decl. at

233; Coley at 7:46-48. According to Coley, [t]he client module 108 can be code

nested within the software application 102 (Coley at 7:65-67), which is another

way to say that the code is embedded in the software application. Decl. at 234-

236. Coley also teaches that the agent, when authorized, enables operation of the

component, and when not authorized, disables operation of the component. That is,

according to Coley, [t]he client module 108 operates to enable or disable the

software application 102 pursuant to a response from a license server 110 in the

context of license validity inquiries. Coley at 7:43-51 (emphasis added); 10:42-49.

c) a server coupled to the embedded agent that, by exchanging a


number of messages with the embedded agent that together
compose a handshake operation, authorizes the embedded agent to
enable operation of the component
Coley discloses this claim element for at least the reasons set forth above in

connection with claim 19 and element b) of claim 44. IX.C.1(c) and (d), supra;

see also Decl. at 239. Claim 19 does not expressly require that the server be

coupled to the embedded agent, but instead requires establishing a

communications link between the embedded agent and a server. There is no

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practical difference between these two requirements. As Described in Section VIII

above, the phrase coupled to should be construed as connected together via a

communication medium. Coley discloses a license server 110 (i.e., the claimed

server) that is connected with the client module 108 (i.e., embedded agent) via a

communications medium, which in this case is the internet. Coley at 4:23-26; 7:58-

65. Specifically, according to Coley, the license validity checking process is

initiated (step 202) by utilizing a modem to form an Internet connection between

the computer 100 and a licensing server (step 204). Coley at 8:60-63 (emphasis

added).

D. Ground III: Dependent Claim 40 is obvious over Coley


Claim 40 depends from independent claim 19. Claim 19 is anticipated by

Coley as explained in Ground II above. Claims 19 and 40 are reproduced below.

Claim 19
a) A method for enabling and disabling operation of a component of a system,
the method comprising:
b) embedding an agent within the component;
c) establishing a communications link between the embedded agent and a
server; and
d) when the component is to be enabled, exchanging a number of messages
between the server and the embedded agent that together compose a
handshake operation that results in authorization of the embedded agent to
enable operation of the component for a period of time.

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Claim 40
a) The method of claim 19 wherein the component of the system is an
executing software program, wherein the system is a computer system, and
wherein the embedded agent is implemented as a software subcomponent of
the software program, the method further including:
b) running a software program that implements the server on a remote
computer to provide a remote server; and
c) enabling execution of the software program by authorizing the embedded
agent subcomponent of the software program.

a) The method of claim 19 wherein the component of the system is an


executing software program, wherein the system is a computer
system, and wherein the embedded agent is implemented as a
software subcomponent of the software program
As described in connection with claim 19 above, Coley discloses a personal

computer 100 that has a client application 103 residing on a hard drive 104. The

client application 103 is comprised of a software application 102 and a client module

108. Coley at 7:43-48; Figure 1. The personal computer corresponds to the

claimed computer system, while the software application 102 residing on the

hard drive of the computer is an example of the claimed component. Decl. at

241. The software application 102 is an executing software program, as required

by claim 40. Decl. at 242. Coley also discloses that an embedded agent is

implemented as a software subcomponent of the software program. Decl. at 243.

Specifically, in Coley, the client module 108 corresponds to the claimed agent,

and [t]he client module 108 can be code nested within [i.e., embedded] the

software application 102. Coley at 7:65-67.

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b) running a software program that implements the server on a


remote computer to provide a remote server
Coley discloses running a software program that implements the server on a

remote computer to provide a remote server. Decl. at 244-249. In Coley, the

license server 110 (i.e., server) is maintained by the software provider and is

coupled to the client module 108 (i.e., embedded agent), where [t]he client

module 108 operates to enable or disable the software application 102 pursuant to a

response from a license server 110 in the context of license validity inquiries. Coley

at 7:43-51; see also 4:22-32. The server can be implemented as a software program

on a remote computer. Decl. at 245-248. For example, Coley discloses a server

computer having a license server running thereon. Coley at 24:22-38 (emphasis

added). As explained in Dr. Alexanders declaration, one of ordinary skill would

understand the terms server computer and license server running above to mean

a software server program executing on a physical computer, i.e., a computer

program that listens on a network connection for client requests. Decl. at 246. To

one of ordinary skill in the art, the term running clearly indicates program

execution. Decl. at 246. The license server of Coley also has a database on

which license information, or records, are stored. The license server also can record

information contained in license inquiry request messages, and thereby audit use of

client applications. The license record can identify a license in accordance with a

hardware address, or hardware identifier of the computer, such as an IP address. Id.

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at 4:22-31 (emphasis added). The fact that the server has a database further

supports the conclusion that the server is executed in software. Indeed, one of

ordinary skill would understand the use of a database to perform such functions to

involve a database server software program. Decl. at 248. To the extent the Board

concludes that Coley does not expressly disclose that the server can be implemented

as a software program on a remote computer, it would have been obvious to one of

ordinary skill in the art to use software running on a computer to act as a server.

Decl. at 249. Indeed, at the time of filing of the 868 Patent, it was well known to

use software server programs executing on physical computers for the purpose of

running a server. Decl. at 249.

c) enabling execution of the software program by authorizing the


embedded agent subcomponent of the software program
Further to the discussion for claim 19 above, [t]he client module 108 can be

code nested within [i.e., embedded] the software application 102. Coley at 7:65-

67 (emphasis added); see IX.C.1(d), supra; see also Decl. at 250-254. Thus,

client module 108 (the embedded agent) is a subcomponent of the software

program (102). According to Coley, [t]he client module 108 operates to enable or

disable the software application 102 pursuant to a response from a license server

110 in the context of license validity inquiries. Coley at 7:43-51; see also 4:22-32.

More specifically, If the client application is licensed (i.e., the database contains a

record of a license), the response can allow the client application to be enabled, or

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re-enabled. In sum, the client application must be enabled for it to properly

operate. Coley at 4:41-48. Coley also teaches that Any software application

having a licensing system client module attached will not operate unless and until

the license system client module receives authority to enable the software

application. Coley at 10:42-49 (emphasis added).

X. CONCLUSION
Unified respectfully requests that a trial be instituted and claims 1, 2, 18, 19,

40, and 44 of the 868 Patent be cancelled. The Director is authorized to charge

for the fees set in 37 C.F.R. 42.15(a) for this Petition for Inter Partes Review,

and further authorizes payment for any additional fees to be charged to McDermott

Will & Emery Deposit Account No. 500417, Reference No. 098850-0017.

Date: July 17, 2017 Respectfully Submitted,

/Artem N. Sokolov/
Michael V. OShaughnessy
Artem N. Sokolov, Reg. No. 61,325
Ashraf Fawzy, Reg. No. 67,914
Roshan Mansinghani, Reg. No. 62,429
Attorneys for Petitioners

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WORD-COUNT CERTIFICATE OF COMPLIANCE

Pursuant to 37 C.F.R. 42.24(d), I hereby certify that this Petition complies

with the type-volume limitation of 37 C.F.R. 42.24(a)(1)(i) because it contains

12,270 words as determined by the Microsoft Office Word 2010 word processing

system used to prepare the petition, excluding the parts of the petition exempted by

37 C.F.R. 42.24(a)(1).

/Artem N. Sokolov/
Artem N. Sokolov
McDermott Will & Emery
500 N. Capitol St., NW
Washington, DC 20001
IPR2017-01788
U.S. Patent 6,249,868

CERTIFICATE OF SERVICE

I hereby certify that on July 17, 2017, I caused a true and correct copy of the

foregoing materials:

Petition for Inter Partes Review of U.S. Patent 6,249,868 under 35


U.S.C. 312 and 37 C.F.R. 42.104; and
Exhibits for Petition for Inter Partes Review of U.S. Patent 6,249,868
(EX1001-1008)
to be served via Federal Express on the following:

Correspondence address of record for Address of record for Attorney


the subject patent, as listed in 868 representing SOFTVAULT SYSTEMS,
Patent Prosecution History: INC. in District Court:

ROBERT W. BERGSTROM MARK W. GOOD


OLYMPIC PATENT WORKS TERRA LAW
P.O. BOX 4277 177 PARK AVENUE,
SEATTLE WA 98194-0277 THIRD FLOOR
SAN JOSE, CALIFORNIA 95113

/Artem N. Sokolov/
Artem N. Sokolov
McDermott Will & Emery
500 N. Capitol St., NW
Washington, DC 20001

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