Beruflich Dokumente
Kultur Dokumente
: 098850-0017
Filed on behalf of Unified Patents Inc.
v.
IPR2017-01788
U.S. Patent 6,249,868
TABLE OF CONTENTS
I. INTRODUCTION ...........................................................................................1
-ii-
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Exhibit List
Exhibit Description
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I. INTRODUCTION
Under 35 U.S.C. 311 and 37 C.F.R. 42.100, Petitioner Unified Patents
review with respect to claims 1, 2, 18, 19, 40 and 44 of U.S. Patent 6,249,868 (the
exercised control or could exercise control over its participation in this proceeding,
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
1
Cases identified with the * symbol are currently pending.
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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
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,
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).
(Decl.) (EX1003) and requests that the Board cancel claims 1, 2, 18, 19 and 44
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3) Additional references that are highly relevant to the 868 Patent are
provided in EX1008.
These grounds are not redundant because the prior art addresses different
claims, and also because the prior art addresses different purported embodiments
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
components of those computers. For this purpose, the 868 Patent discloses the
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
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
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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
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The 868 Patent also discloses embodiments where the agent is implemented in
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Id. at 5:56-64 (emphasis added). For example, the server may determine whether a
valid license exists, the server may authorize the embedded agent to enable that
examination. However, U.S. Patent No. 6,594,765 (hereinafter the 765 Patent)
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
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
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
not necessarily connected to an embedded agent via a local area network. Figure 5
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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
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such as the CPU 61 (blue), SIMM memory modules 60 (yellow), and a hard disk
of PC 20 and the SSP 23, way of a modem 21 connected to a phone network 22.
for automatically tracking use of a software and also for determining whether the
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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.
the art of the 868 Patent would have had a range of knowledge roughly
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.
Claim constructions appropriate for these proceedings may be different than claim
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
868 Patent at 5:56-63; see also 6:66-67 (FIG. 3 is a block diagram of example
consistent with Patent Owners interpretation of the term. See, e.g., EX1007 (Joint
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computer system. Decl. at 52. Indeed, claim 45 of the 868 Patent expressly
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
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
comes directly from claims of the 868 Patent, which require the agent to enable
does not appear in the specification of the 868 Patent, but was set forth as part of
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other composition of code. Decl. at 56. Indeed, the 868 Patent explicitly states
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
either the device (e.g., claim 1) or the component (e.g., claim 44). The word
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.,
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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-
routines running within the devices 868 Patent at 3:52-55 (emphasis added).
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
embedded agent. See, e.g., claim 44. The phrase coupled to, as used in the
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
based on statements made by the Applicants during prosecution of the related 765
(emphasis added). Applicants then distinguished the prior art Pagliaroli reference
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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
disclosed in Figures 7A-F and 8A-F. EX1002 at 5-6; see also 868 Patent at
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
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
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and alarm exception. 868 Patent at 28:47-51; 10:55 to 15:6; Figures 6A-9B. This
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.
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
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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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,
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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.
but the rightful owner. The technique allows stolen and recovered products and
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critical components 60 [and] 61 and a hard disk drive HDD 63. Collins at page 4
system and components 60, 61, and 63 are each examples of the claimed device.
Decl. at 86-88.
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enables operation of the device and that, when not authorized, disables operation of
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
manufacturer or retailer with a unique part number (PN), one or more cryptographic
of the IPD are shown in Figure 1 of Collins. The IPD is implemented in hardware
1. Finally, as discussed in detail below, the IPD can be directed to enable or disable
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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
each of devices 60, 61, and 63. Collins at Figure 2 and page 4.
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
link between the IPDs and the SSP is established . . . each IPD sends its PN together
an IPD has not been reported stolen, then the SSP replies with a valid
. 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
(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.
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
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Specifically, Collins discloses that the IPD (i.e., agent) communicates with a
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
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
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
The SSP exchanges a number of messages with the IPD (i.e., embedded
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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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
The SSP in Collins authorizes the IPD (i.e., embedded agent) to enable
valid response from the SSP, inside the time limit, then it allows the product or
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-
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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:
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system can determine that the exchanged messages are valid. Decl. at 116.
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.
manufactures and the SSPs, including the rightful owner, are unable to provide a
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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
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,
disclosed by Collins reference to the IPD being additional logic for the circuit.
provides highest level of deterrent because the IPD is truly integral making by-
contains a logic circuit and the embedded agent is implemented as a logic circuit
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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.
components of the computer system including a CPU and memory devices. Decl.
more IPDs. Collins (EX1004) at page 2. For example, Figure 2 of Collins below
60, which are each memory devices, and a processor (CPU) 61, which Collins
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The memory modules 60 and the CPU 61 are all components of the
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
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
hardware logic circuits that run within the device or component within which the
(i.e., the embedded agents) are shown to be embedded within the memory
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.
device). As discussed above, the claim term component, refers to any part of
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.
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example, Collins discloses that Electronic products and components are designed
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,
system. See IX.B.1(c) and (d) and IX.B.3 supra. Indeed, the 868 Patent
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
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
IX.B.1(b); IX.B.3, supra; see also Collins at page 1, 3-4, Abstract; Figure 1;
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
expressly refers to the connection between the IPDs and the SSP as a
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
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discloses the claim 1 requirement of a server coupled to the embedded agent that,
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
inside the time limit, allows the part to function normally. Collins at Abstract;
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
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
device). Thus, claim 44 is anticipated by Collins for the reasons set forth with
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
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
(EX1004) at page 1 (emphasis added). The memory modules 60, CPU 61, and
personal computer (PC) system. See IX.B.1(b) and IX.B.3, supra; Decl. at
because it includes multiple components, including memory modules 60, CPU 61,
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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discloses the claim 1 requirement of a server coupled to the embedded agent that,
operation of the device. See IX.B.1(d), see also IX.B.4(c) and (d), supra; see
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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
example, SoftVault has asserted at least Claims 19 and 44 of the 868 Patent against
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EX1006 (Adobe Complaint) at 15. The same product activation features are
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.
tracking use of a software and also for determining whether the software is validly
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
response from a license server 110 in the context of license validity inquiries. Coley
claimed system, and the software application 102 residing on the hard drive of
application 102 and a client module 108. Coley at 7:46-48. The client module
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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
application and then compiling that application into a single executable 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
As discussed above, the disclosure of the 868 Patent explicitly confirms that
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
55. Moreover, as dependent claim 40 of the 868 Patent (which depends from claim
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wherein the system is a computer system, and wherein the embedded agent is
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
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
Coley, the license server communicates with the client module 108 over a public
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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
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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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
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,
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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the component for a period of time. Decl. at 224. For example, Coley teaches that:
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
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
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Coley for at least the same reasons set forth with respect to claim 19 above, as well
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
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
component system. To the extent the preamble is even deemed to be limiting, there
7
As changed by the Certificate of Correction issued July 18, 2006.
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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
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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
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
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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-
the computer 100 and a licensing server (step 204). Coley at 8:60-63 (emphasis
added).
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.
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
claimed computer system, while the software application 102 residing on the
by claim 40. Decl. at 242. Coley also discloses that an embedded agent is
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
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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
understand the terms server computer and license server running above to mean
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
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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
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
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,
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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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
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.
/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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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:
/Artem N. Sokolov/
Artem N. Sokolov
McDermott Will & Emery
500 N. Capitol St., NW
Washington, DC 20001