Paper Entered: April 21, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Entered: April 21, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KASPERSKY LAB, INC., Petitioner, v. UNILOC USA, INC. and UNILOC LUXEMBOURG S.A., Patent Owner. Case Before WILLIAM V. SAINDON, DONNA M. PRAISS, and PATRICK R. SCANLON, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R

2 Kaspersky Lab, Inc. ( Petitioner ) filed a Petition (Paper 4, Pet. ) to institute an inter partes review of claim 19 of U.S. Patent No. 5,490,216 C2 ( the 216 patent, Ex ) pursuant to 35 U.S.C A Preliminary Response (Paper 9, Prelim. Resp. ) was filed by Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, Patent Owner ). Petitioner challenges claim 19 of the 216 patent under 35 U.S.C. 103(a). Pet. 5. We have jurisdiction under 35 U.S.C We deny institution of an inter partes review as to claim 19 as discussed below. I. BACKGROUND A. Related Proceedings The 216 patent was asserted against Petitioner in the U.S. District Court for the Eastern District of Texas in Uniloc USA, Inc. and Uniloc Luxembourg S.A. v. Kaspersky Lab, Inc., Civil Action No. 6:13-cv Pet. 3. The 216 patent is also the subject of another inter partes review proceeding (IPR ) in which trial was instituted. Sega of Am., Inc., et al. v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., Case IPR (PTAB March 10, 2015) (Paper 11). The 216 patent was the subject of Uniloc USA, Inc. and Uniloc Singapore Private Limited v. Microsoft Corp. in which decisions on claim construction were issued by the U.S. District Court for the District of Rhode Island (Exs. 1012, 1014) and affirmed by the Federal Circuit (Exs. 1013, 1015). Pet 19; Prelim. Resp. 7. The 216 patent was also the subject of two reexamination proceedings (Control Nos. 90/010,831 and 90/012,179, Reexam I and Reexam II, respectively). Pet. 23; Exs. 1010,

3 B. The 216 Patent (Ex. 1002) The 216 patent, titled System for Software Registration, is directed to a system that allows software to run without restrictions ( use mode ) if a specified licensing procedure has taken place. Ex. 1002, Abstr. A code portion in the digital data to be protected may include an algorithm that generates a registration number unique to a licensee of the digital data. Id. The algorithm in the code portion is duplicated at a remote location under the control of the licensor. Id. A mode switching means compares the local and remote registration numbers and, if they match, the program enters into a use mode. Id. at 4:49 54, 13: If they do not match, the program enters into a demo mode in which features of the program are disabled. Id. The block diagram of Figure 8 of the 216 patent is reproduced below to illustrate the registration system: 3

4 The registration system depicted in Figure 8 operates in the manner generally described by the embodiments disclosed in the 216 patent. Id. at 11: C. Claim 19 Independent claim 19 is the only claim challenged in the petition (Ex. 1002, 15:21 16:8 (paragraphs, indentations, and bracketed matter added)): 19. A remote registration station incorporating remote licensee unique ID generating means, [a] said station forming part of a registration system for licensing execution of digital data in a use mode, [b] said digital data executable on a platform, [c] said system including local licensee unique ID generating means, [d] said system further including mode switching means operable on said platform which permits use of said digital data in said use mode on said platform only if a licensee unique ID generated by said local licensee unique ID generating means has matched a licensee unique ID generated by said remote licensee unique ID generating means; and [e] wherein said remote licensee unique ID generating means comprises software executed on a platform which includes the algorithm utilized by said local licensee unique ID generating means to produce said licensee unique ID. D. The Prior Art Petitioner relies on the following prior art: Reference Publication Date Exhibit Hellman US 4,658,093 Apr. 14, Moseley US 4,779,224 Oct. 18, Johnson US 5,023,907 June 11, Waite US 5,103,496 Apr. 7, Mehnert Edward Mehnert, A Code to Generate Random Identifiers and Select QA/QC Samples, 30 GROUND WATER, no. 3, May

5 Petitioner also provides the Declaration of Alexandre Antonov dated October 28, 2014 ( Antonov Decl. Ex. 1003) as support for its arguments. grounds: E. The Asserted Grounds Petitioner challenges claim 19 of the 216 patent on the following Claim Challenged Basis References (a) Hellman and Waite (a) Hellman and Mehnert (a) Moseley and Johnson F. Claim Interpretation As a first step in our analysis, we determine the meaning of the claims. The challenged patent expired on September 21, Because the claims of an expired patent are not subject to amendment, the rule of broadest reasonable construction per 37 C.F.R (b) does not apply. In this circumstance, the Board s review of the claims is similar to that of a district court. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Specifically, the claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 2005) (en banc)). For purposes of this Decision, and after thorough review of the record, we agree with the analysis by the District Court for the District of Rhode Island and adopt the claim construction issued in Uniloc USA, Inc. and Uniloc Singapore Private Limited v. Microsoft Corp., No S ( Microsoft litigation ). See Ex (claim construction decision and order dated Aug. 22, 2006). The 5

6 table below summarizes the court s construction of claim terms in claim 19 of the 216 patent. Ex. 1014, 3 4. Claim Term D.R.I. Claim Construction Registration system Licensee Unique ID Use mode Local licensee unique ID generating means Remote licensee unique ID generating means Mode switching means Has matched Includes the algorithm utilized by said local licensee unique ID generating means to produce said licensee unique ID Algorithm [A] system that allows digital data or software to run in a use mode on a platform if and only if an appropriate licensing procedure has been followed [A] unique identifier associated with a licensee A mode/version that allows full use of the digital data or software in accordance with the license Function: to generate a local or remote licensee unique ID Structure: a summation algorithm or a summer and equivalents thereof Function: to permit the digital data or software to run in a use mode if the locally generated licensee unique ID matches with the remotely generated licensee unique ID Structure: program code which performs a comparison of two numbers or a comparator and an equivalent thereof A comparison between the locally generated licensee unique ID/registration key and the remotely generated licensee unique ID/ enabling key shows that the two are the same [I]ncludes the identical algorithm used by the local licensee unique ID generating means to produce the licensee unique ID [A] set of instructions that can be followed to carry out a particular task 6

7 II. ANALYSIS The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. 314(a) (emphasis added). We determine that the Petition includes insufficient information to meet this threshold. A. Hellman and Waite Based on our review of the arguments and supporting evidence submitted by Petitioner and Patent Owner, we are not persuaded that Petitioner has shown, on the current record, that there is a reasonable likelihood that it would prevail in its challenge to claim 19 over Hellman and Waite. According to Petitioner, Hellman was considered as an anticipatory reference in Reexam I, Waite was considered as an anticipatory reference in Reexam II, each was found to lack at least one element of claim 19, but the combination of the two was not considered. Pet. 23. Hellman discloses a software system to prevent software piracy by limiting the number of times that a program can be run on a given machine. Id. at 7 (citing Ex. 1004, 4:21 36). [I]dentical cryptographic functions run[] on both the user s local base unit and the remote authorization and billing unit. Id. at 7 8 (citing Ex.1004, 4:46 60). The software is unlocked if the results of the cryptographic functions match. Id. at 8 (citing Ex. 1004, 4:60 63). The user initiates a request that transmits information from the user s local base unit to the remote unit that includes software name, serial number unique to the base unit, the number of uses requested, billing information, and a 7

8 random number generated by the base unit R. Id. (citing Ex. 1004, 5:51 6:15, Figs. 1 & 5). According to Petitioner, Waite discloses a system for activating software in a shell program to run in a use mode. Id. at 14 (citing Ex. 1007, 1:34 38). The user information that is transmitted with the registration file request to a central registration computer is merged with the missing critical segment of the software to form a unique tamperproof overlay file. Id. at 15 (citing Ex. 1007, 3:24 32, 3:43 46). Running the overlay file unlocks full use of the software program. Id. (citing Ex.1007, 4:9 13). Petitioner asserts that during Reexam I, Hellman was found to teach a remote and local license ID generating means, but the ID generated was not unique to the licensee. Id. at 25. Petitioner further asserts that Waite supplies the missing element by teaching the use of specific user identification data to generate a licensee unique ID. Id. (citing Ex. 1007, 3:9 15, 4:62 69). Petitioner states that in Reexam II the Examiner concluded that the algorithm executed on the user s computer in Waite is not identical to the algorithm executed on the server. Id. (citing Ex. 1011, 12 13). Petitioner also asserts that a noted problem of Waite is its inability to prevent piracy after the initial registration. Id. at 26 (citing Ex. 1002, 1:52 56). Nevertheless, Petitioner contends that a combination of Hellman and Waite would have been obvious because Waite is analogous art and the distribution system of Hellman addresses the noted problem of Waite by utilizing encryption and executing each time the software is run. Id. at 26 8

9 27 (citation omitted). 1 Petitioner also contends that [s]ubstitution of a summation algorithm in place of [Hellman s] cryptographic function 38 would have been obvious to one of ordinary skill in the art. Id. at 27 (citing Ex. 1010, 6 (citing Ex. 1004, 11:42 47, 7:67 8:12)). We are not persuaded that Petitioner has explained adequately why an ordinary artisan would have had a reason to modify Hellman s remote and local licensee ID generating means in view of Waite to include a user associated identifier to generate a licensee unique ID as required by claim 19. Petitioner s arguments that it would have been obvious to combine Hellman and Waite are conclusory and unpersuasive. See Pet Further, the asserted reason for the combination, i.e., Hellman s encryption and execution each time the software is run, amounts to little more than an identification of an end-benefit from a particular combination, not an explanation of why it would have been obvious to one of ordinary skill to modify Hellman s remote and local licensee ID generating means to generate a licensee unique ID as the claim requires. As the Supreme Court stated, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Although common sense directs one to look with care at patent claims that combine two known devices according to their established functions, it can be important to identify a reason that would have prompted 1 The Petition cites to paragraph 42 of the Antonov Declaration as support for the obviousness conclusion over Hellman and Waite (Pet ), however, we understand this to be a typographical error since paragraph 42 only relates to Waite as analogous art to the 216 patent. 9

10 a person of ordinary skill in the relevant field to combine the elements. Id.; Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) ( Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements.... ) (citations omitted). Petitioner improperly relies on the disclosure of the 216 patent itself to justify its obviousness theory. For example, Petitioner argues that the 216 patent teaches that Waite appears to require and indeed, rely on, encryption (Pet. 26 (quoting Ex. 1002, 1:47 51)) and notes Waite s inability to prevent piracy after the initial registration (id. (citing Ex. 1002, 1:52 56)). It is impermissible to use the disclosure of the 216 patent in this manner as a basis for what would have been known to those of ordinary skill in the art at the time of the invention. See In re Shuman, 361 F.2d 1008, 1012 (C.C.P.A. 1966) ( It is impermissible to first ascertain factually what appellants did and then view the prior art in such a manner as to select from the random facts of that art only those which may be modified and then utilized to reconstruct appellants invention from such prior art. ). Mr. Antonov testifies that a combination of Hellman and Waite would have been obvious. Ex. 1003, 43. This conclusion follows the same analysis that appears in the Petition, namely, that the observed deficiencies of Waite described in the 216 patent are not present in Hellman. Id.; see Pet This may explain why Hellman s system is preferable to Waite s system, but, does not explain why one of skill in the art would have considered it obvious to make the cryptographic algorithm in 10

11 Hellman a summation algorithm or to utilize a user associated identifier to generate a licensee unique ID. Therefore, this evidence is not probative of obviousness. Petitioner also asserts that substitution of a summation algorithm, summer, or equivalent in place of the cryptographic functions 23, 38 [of Hellman] would be obvious to one of ordinary skill in the art at the time of the invention. Pet. 24. Petitioner provides a quotation from the Examiner in Reexam I that there were a finite number of algorithms available at the time of the invention and it would have been obvious to try a recognized alternative in the implementation of Hellman. Id. Petitioner provides no argument or support for cryptographic algorithms and summation algorithms being recognized substitutes in software activation systems. Therefore, we are not persuaded that Petitioner has established a cryptographic algorithm is an equivalent of a summation algorithm as required by claim 19. Petitioner thus provides neither a sufficiently articulated reasoning nor a rational evidentiary underpinning explaining why an ordinary artisan would have had considered it obvious, in light of Waite, to add user associated information and a summation algorithm to Hellman s system for unlocking software. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness )). Consequently, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that claim 19 is unpatentable over Hellman and Waite under 35 U.S.C. 103(a). 11

12 B. Hellman and Mehnert Based on our review of the arguments and supporting evidence submitted by Petitioner and Patent Owner, we are not persuaded that Petitioner has shown, on the current record, that there is a reasonable likelihood that it would prevail in its challenge to claim 19 as obvious over Hellman and Mehnert. Petitioner asserts that Hellman does not teach a unique licensee ID because, according to the Examiner, the random number R that is generated in Hellman s software system is generated by the computer alone, with no input from the licensee. Pet. 29. Petitioner relies on the Examiner s determination regarding Hellman in Reexam I as support for this proposition. Id. (citing Ex. 1010, 5). Petitioner also asserts that Mehnert teaches using information specific to a user to generate a random number, therefore, it was known at the time of invention of the 216 patent. Id. Petitioner concludes that it would have been obvious to use the method of using user unique information taught by Mehnert as the seed for a random number generator in the system of Hellman. Id. at (citing Ex ). Petitioner also concludes that it would have been obvious to substitute a summation algorithm in place of the cryptographic function in Hellman. Id. at 30. We agree with Patent Owner that Petitioner has not established that Mehnert is analogous art. See Prelim. Resp The test for analogous art requires showing a reference is either in the same field of endeavor as the 216 patent or is reasonably pertinent to the particular problem with which the inventor was concerned in order to rely on that reference as a basis for unpatentability. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 12

13 1992) (citation omitted). Mehnert is an article published in a journal focused on groundwater about the use of a computer code called SAMPLID which generates unique numbers for identification of samples, selection of QA/QC samples, and generation of labels. Ex. 1009, Abstr. Thus, Mehnert is not in the same field of endeavor as the 216 patent. References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. In re Oetiker, 977 F.2d at Petitioner does not provide sufficient evidence and explanation to show that generating a random number with the input of a social security number, as taught by Mehnert, is reasonably pertinent to the problem with which the inventor of the 216 patent was concerned. Instead, Petitioner explains how Hellman and Mehnert could be combined. Pet. 30. Paragraph 37 of the Antonov Declaration is provided as support for Petitioner s argument. Id. Paragraph 37 of the Antonov Declaration, however, relates to Hellman only, not Mehnert. Accordingly, Petitioner has not shown Mehnert is reasonably pertinent to the problem faced by the inventors of the 216 patent. Even if Mehnert were analogous art to the 216 patent, we also are not persuaded that Petitioner has explained adequately why an ordinary artisan would have had a reason to modify Hellman s remote and local licensee ID generating means in view of Mehnert. Petitioner s arguments that it would have been obvious to combine Hellman and Mehnert are conclusory and unpersuasive. See Pet. 30. Further, it is insufficient that Mehnert s random number generating code was known at the time of the 216 patent invention to establish obviousness. See id. at 29. Obviousness requires more than a mere showing that the prior art includes separate references covering each 13

14 separate limitation in a claim under examination. Uniqene Labs., Inc., 655 F.3d at 1360 (citation omitted). Petitioner thus provides neither a sufficiently articulated reasoning nor a rational evidentiary underpinning explaining why an ordinary artisan would have had reason, in light of Mehnert, to add user associated information and a summation algorithm to Hellman s system for unlocking software. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988 (Fed. Cir. 2006) (requiring some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness ).) Consequently, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that claim 19 is unpatentable over Hellman and Mehnert under 35 U.S.C. 103(a). C. Moseley and Johnson Based on our review of the arguments and evidence in the Petition and the Preliminary Response, we are not persuaded that Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in its challenge to claim 19 under 35 U.S.C. 103(a) over Moseley and Johnson. Based on the Reexam II proceeding, Petitioner asserts that Moseley teaches a remote and local ID generating means as required by claim 19, however, the ID generated was not deemed unique to a licensee. Pet. 33. Petitioner further asserts that Johnson teaches a more flexible network licensing method that builds on the single-cpu type of authentication disclosed by Moseley. Id. (citing Ex. 1005, 1:16 20). According to Petitioner, a single-cpu type model licenses software for a single computer such as the system in Moseley. Johnson, on the other hand, solves the problem of users who are not tied to a specific computer being able to access 14

15 software by requiring transmission of information relating to the user using the network before granting access to a program. Id. at (citing Ex. 1006, 2:60 3:6). Petitioner contends it would have been obvious to (1) use Johnson s information relating to the user as an input to the identical mathematical algorithms of Moseley and (2) use Johnson s Network License Server (NLS) lock as a mode switching means because software licensing systems often borrowed from solutions to the analogous problem of user authentication in computer network systems. Id. at 33 (citing Ex , 51). Petitioner further contends that [s]uch a combination would have solved the problem noted in the specification of the 216 Patent of allowing a licensed user to run software on different computers. Id. (citing Ex. 1002, 2:8 10). The Antonov Declaration does not provide any additional explanation for the combination. See Ex. 1003, 50, 51. We are not persuaded that Petitioner has explained adequately why an ordinary artisan would have considered it obvious to modify Moseley s system in view of Johnson. Petitioner s arguments that it would have been obvious to combine Moseley and Johnson are conclusory and unpersuasive. See Pet Further, the asserted reason for the combination does not explain why the two selected features of Johnson would have been combined with the Moseley system other than to produce a network licensing system with all of the elements and limitations recited in claim 19 of the 216 Patent. Id. at 33 (citing Ex , 51). The problem of allowing the software to be run on different computers may be a rationale for selecting information connected to the user, but it does not explain the further combination of Johnson s NLS lock as a mode switching means in the Moseley system. Using the 216 patent claim as the basis for the selection 15

16 of components to be combined, rather than solely information available to a person of ordinary skill in the art at the time of the invention, is not a rationale for combining, but, rather, impermissible hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Consequently, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that claim 19 is unpatentable as obvious over Moseley and Johnson. D. Conclusion For the foregoing reasons, based on the record presented, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its asserted grounds of unpatentability of claim 19 of the 216 patent. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that institution of inter partes review is denied. 16

17 PETITIONER: Casey A. Kniser Eric H. Chadwick Patterson Thuente Pedersen, P.A. PATENT OWNER: Sean Burdick 17