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`Paper No. ________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`KYOCERA INTERNATIONAL, INC.
`Petitioner
`v.
`
`BLUE SPIKE, LLC
`Patent Owner
`
`Patent No. 5,745,569
`Issue Date: April 28, 1998
`Title: METHOD FOR STEGA-CIPHER PROTECTION OF COMPUTER CODE
`_______________
`
`Inter Partes Review No. IPR2017-01061
`____________________________________________________________
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`
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`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
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`TABLE OF CONTENTS
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`EXHIBIT LIST ........................................................................................................ iii
`NOTICE OF LEAD AND BACKUP COUNSEL ..................................................... 1
`NOTICE OF EACH REAL-PARTY-IN-INTEREST ............................................... 1
`NOTICE OF RELATED MATTERS ........................................................................ 1
`NOTICE OF SERVICE INFORMATION ................................................................ 2
`GROUNDS FOR STANDING .................................................................................. 2
`STATEMENT OF MATERIAL FACTS .................................................................. 2
`STATEMENT OF PRECISE RELIEF REQUESTED .............................................. 3
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ......................... 3
`STATEMENT OF REASONS FOR RELIEF REQUESTED ................................... 4
`I.
`Introduction to the Technology of the ’569 Patent .......................................... 4
`II.
`Independent Claims 1, 10, and 16 of the ’569 Patent ...................................... 5
`III. Construction of the Claims .............................................................................. 7
`i.
`“copy protecting a software application” (Claims 1, 10, 16) ................ 7
`ii.
`“during execution of the software application” (Claim 16) ................ 10
`iii.
`“intermittently relocating” (Claim 16) ................................................ 12
`iv.
`“executable code resources” (Claims 1, 10, 16) ................................. 13
`IV. Claim-By-Claim Explanation of Grounds for Unpatentability ..................... 14
`Ground 1. Claims 1, 10, and 16 of the ’569 Patent are unpatentable as
`anticipated by Goldreich (Ex. 1003). .................................................. 15
`Goldreich Is Prior Art Under 35 U.S.C. § 102(b) ............................... 15
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`i.
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`i
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`Goldreich Discloses All Elements of Independent Claims 1, 10, and
`ii.
`16 ......................................................................................................... 16
`Ground 2. Claim 16 of the ’569 Patent is unpatentable as anticipated by U.S.
`Patent No. 5,123,045 (Ex. 1005). ........................................................ 24
`The ’045 Patent Is Prior Art Under 35 U.S.C. § 102(b) ..................... 24
`i.
`The ’045 Patent Discloses All Elements of Independent Claim 16 .... 24
`ii.
`Ground 3. Claim 16 of the ’569 Patent is unpatentable as anticipated by
`Ostrovsky 1992 (Ex. 1004). ................................................................ 32
`Ostrovsky 1992 Is Prior Art Under 35 U.S.C. § 102(b) ...................... 32
`i.
`Ostrovsky 1992 Discloses All Elements of Independent Claim 16 .... 32
`ii.
`Ground 4. Claim 16 of the ’569 Patent is unpatentable as anticipated by
`Ostrovsky 1990 (Ex. 1006). ................................................................ 36
`Ostrovsky 1990 Is Prior Art Under 35 U.S.C. § 102(b) ...................... 36
`i.
`Ostrovsky 1990 Discloses All Elements of Independent Claim 16 .... 37
`ii.
`CONCLUSION ........................................................................................................ 41
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`ii
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
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`EXHIBIT LIST
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`
`
`Exhibit
`Ex. #
`1001 U.S. Patent No. 5,745,569 (“the ’569 Patent”)
`1002
`Image File Wrapper for ’569 Patent
`1003 Oded Goldreich, Towards a Theory of Software Protection and
`Simulation by Oblivious RAMs, 1987 Symposium on Theory of
`Computing 182-194 (May 1987) (“Goldreich”)
`1004 Rafail Ostrovsky, Software Protection and Simulation on Oblivious
`RAMs (May 17, 1992) (MIT Ph.D. Thesis) (“Ostrovsky 1992”)
`1005 U.S. Patent No. 5,123,045 to Rafail Ostrovsky (“the ’045 Patent”)
`1006 Rafail Ostrovsky, Efficient Computation on Oblivious RAMs, 1990
`Symposium on Theory of Computing 514-523 (May 1990) (“Ostrovsky
`1990”)
`Expert Declaration of Rafail Ostrovsky, Ph.D.
`1007
`1008 Claim Construction Order entered May 16, 2016 in an unrelated
`litigation, Blue Spike, LLC v. Huawei Techs. Co. et al., Case No. 6:13-
`cv-00679, Dkt. 194.
`1009 Curriculum Vitae of Rafail Ostrovsky, Ph.D.
`1010
`Image File Wrapper for U.S. Patent No. 8,930,719
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`iii
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
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`NOTICE OF LEAD AND BACKUP COUNSEL
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`Lead Counsel: Nicola A. Pisano (Reg. No. 34,408) Tel: 858.847.6877
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`Backup Counsel: Scott R. Kaspar (Reg. No. 54,583) Tel: 312.832.5113
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`Address: Foley & Lardner LLP, 3579 Valley Centre Drive, San Diego, CA 92130
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`Fax: 858.792.6773
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`NOTICE OF EACH REAL-PARTY-IN-INTEREST
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`The real-parties-in-interest are: Kyocera International, Inc. is a wholly-owned
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`subsidiary of Kyocera Corporation, a publicly-traded Japanese entity.
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`NOTICE OF RELATED MATTERS
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`Patent Owner asserted the ’569 Patent against Kyocera International, Inc. in the
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`Eastern District of Texas in a case captioned Blue Spike, LLC v. Archos, Inc. et al.,
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`Case No. 6:16-cv-1142, filed September 2, 2016. Patent Owner voluntarily dismissed
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`the action on February 9, 2017. On February 10, 2017, Kyocera International, Inc.
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`filed a complaint for declaratory judgment of non-infringement only in the Southern
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`District of California in a case captioned Kyocera International, Inc. v. Blue Spike,
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`LLC, Case No. 3:17-cv-0262-BTM-JMA, which is now pending before the Hon. Barry
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`T. Moskowitz.
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`1
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`NOTICE OF SERVICE INFORMATION
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`Please address all correspondence to the lead counsel at the address above.
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`Petitioner consents to electronic service at: npisano@foley.com; and
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`skaspar@foley.com.
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`GROUNDS FOR STANDING
`Petitioner hereby certifies that the patent for which review is sought is available for
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`inter partes review and that the Petitioner is not barred or estopped from requesting an
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`inter partes review challenging the patent claims on the grounds identified in the
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`Petition.
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`STATEMENT OF MATERIAL FACTS
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`The ’569 Patent matured from U.S. Patent Application Serial No. 587,943, filed
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`January 17, 1996, and issued on April 28, 1998. The ’569 Patent expired on January
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`17, 2016.
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`The ’569 Patent does not claim priority to any earlier-filed patent applications.
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`Accordingly, the effective filing date of the ’569 Patent is January 17, 1996. Applying
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`the Pre-AIA Section 102(b) requirement, prior art to the ’569 Patent is that which was
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`patented or described in a printed publication more than one year before the effective
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`filing date of the ’569 Patent (i.e. before January 17, 1995).
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`The ’569 Patent purports to cover a method for protecting computer code
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`copyrights by encoding the code into a data resource with a digital watermark. The
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`’569 Patent describes the problem of skilled computer hackers, who take a “snap-shot”
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`of the code while it is in the computer’s memory, in order to copy it. Ex. 1001 at 7:39-
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`44, 7:52-59, 8:4-10 (describing process by which a skilled technician can overcome
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`countermeasures using a “snap-shot of the code in memory”).
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`The ’569 Patent purports to solve the “snap-shot” counterfeiting attacks by
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`randomly shuffling portions of the executing code in the computer’s memory, such that
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`any “snap-shot” taken by a would-be hacker is meaningless. Ex. 1001 at 7:52-59, 8:1-
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`10. Claim 16 of the ’569 Patent, in particular, is directed to guard against hacking by
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`“intermittently relocating” code resources within the memory in order to provide a
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`measure of “copy protecting”.
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`The purported invention claimed in the ’569 Patent, which shuffles code in the
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`computer memory in order to defeat copying attacks, was well known in the art many
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`years before the priority date of the ’569 Patent.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner respectfully requests the Board initiate an inter partes review and cancel
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`Claims 1, 10, and 16 of the ’569 Patent as unpatentable pursuant to 35 U.S.C. § 311(b)
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`based on the four grounds of unpatentability discussed in detail herein.
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`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`A petition for inter partes review must demonstrate “a reasonable likelihood that
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`the petitioner would prevail with respect to at least one of the claims challenged in the
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`petition.” (35 U.S.C. § 314(a).) The Petition meets this threshold. All elements of
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`U.S. Patent No. 5,745,569
`Claims 1, 10, and 16 of the ’569 Patent are taught in the prior art as explained below in
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`the proposed grounds of unpatentability.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`I.
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`Introduction to the Technology of the ’569 Patent
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`The ’569 Patent, entitled “Method for Stega-Cipher Protection of Computer Code,”
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`is directed to “[a] method for protecting computer code copyrights by encoding the
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`code into data resource with a digital watermark.” Ex. 1001, Abstract. The Summary
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`of Invention further describes that the “goal” of the alleged “present invention” is to
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`“provide a level of security for executable code on similar grounds as that which can
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`be provided for digitized samples.” Ex. 1001 at 3:21-23. The Field of Invention of the
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`’569 Patent describes a problem that the ’569 Patent is purported to solve. According
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`to that section the ’569 Patent: “With the advent of computer networks and digital
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`multimedia, protection of intellectual property has become a prime concern for
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`creators and publishers of digitized copies of copyrightable works, such as musical
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`recordings, movies, video games, and computer software. One method of protecting
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`copyrights in the digital domain is to use ‘digital watermarks.’” Ex. 1001 at 1:5-11.
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`Consequently, the ’569 Patent purports to solve the problem through the use of a
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`“stegacipher” process: “It is desirable to use a ‘stega-cipher’ or watermarking process
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`to hide the necessary parts or resources of the executable object code in the digitized
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`sample resources. Ex. 1001 at 2:1-3.
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`U.S. Patent No. 5,745,569
`The purported invention of the ’569 Patent—i.e., to watermark or to shuffle code in
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`the computer memory—was well known in the prior art many years before the priority
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`date of the ’569 Patent. In particular, the claimed methods were disclosed at least by
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`the prior art identified in this Petition, as detailed in the claim charts that follow.
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`Independent Claims 1, 10, and 16 of the ’569 Patent
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`II.
`Independent claims 1 and 10 are directed to watermarking, that is, methods of
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`embedding a resource into the code. Claim 1 states and requires:
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`1. A method for copy protection of computer software, the
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`computer software including executable code and a non-
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`executable digital sample, said method comprising the steps
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`of:
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`identifying a portion of the executable code to be
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`encoded:
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`generating an encoded code resource from the identified
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`portion of the executable code; and
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`embedding the encoded code resource in the non-
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`executable digital sample.
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`Similarly, Independent claim 10 states and requires:
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`10. A method for copy protection of computer software to be
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`provided to an authorized user, the computer software
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`U.S. Patent No. 5,745,569
`including a plurality of code resources and a plurality of data
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`resources, wherein each of the plurality of code resources
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`includes a set of executable instructions, said method
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`comprising the steps of:
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`selecting a code resource to be encoded;
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`using information relating to the authorized user to
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`associate the selected code resource with a data resource; and
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`encoding the selected code resource within the associated
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`data resource.
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`Independent claim 16 is directed to the process of “intermittently relocating”
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`aspects of the code in the computer memory in order to provide a measure of “copy
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`protecting”. Claim 16 states and requires:
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`16. A method for copy protecting a software application
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`executed by a computer system, the software application
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`including a plurality of executable code resources loaded in a
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`memory of the computer system, said method comprising the
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`steps of:
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`determining an address within the memory of the
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`computer system associated with each of the plurality of
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`executable code resources; and
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`U.S. Patent No. 5,745,569
`intermittently relocating each of the plurality of
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`executable code resources to a different address within the
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`memory of the computer during execution of the software
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`application.”
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`III. Construction of the Claims
`An expired claim in an inter partes review is construed under the standard set forth
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`in Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005), where claim terms
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`are presumptively given their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art at the time of the invention, considering the language
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`of the claims and specification, and the prosecution history. See Panel Claw, Inc. v.
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`Sunpower Corp., IPR2014-00386, Paper 7 at 7 (P.T.A.B. June 30, 2014).
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`In addition to this presumption, Petitioner provides a more detailed explanation of
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`the ordinary and customary meaning of certain claim terms.
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`i.
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`“copy protecting a software application” (Claims 1, 10, 16)
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`The preambles of Claims 1, 10, and 16 are claim limitations. “If the claim
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`preamble, when read in the context of the entire claim, recites limitations of the claim,
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`or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim,
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`then the claim preamble should be construed as if in the balance of the claim.” Pitney
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`Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “When
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`limitations in the body of the claim rely upon and derive antecedent basis from the
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`U.S. Patent No. 5,745,569
`preamble, then the preamble may act as a necessary component of the claimed
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`invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir.
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`2003) (citations omitted).
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`Here, the preambles provide antecedent basis to multiple claim limitations that
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`appear in the body of the respective claims. For example, each of the terms “software
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`application,” “computer system,” “plurality of executable code resources,” and
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`“memory of the computer system” appear in the preambles and in the body of each of
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`Claims 1, 10 and 16. The preambles further give life, meaning and vitality to the
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`claims by teaching that the claimed methods are “for copy [protecting/protection of] a
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`software application.” Accordingly, the preambles should be considered claim
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`limitations.
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`The specification of the ’569 patent repeatedly describes that the disclosed methods
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`are designed to protect a software application from unauthorized copying. For
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`example, the specification states that in the purported invention “distribution and
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`exchange of content would be made more secure from unauthorized copying,” and that
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`the allegedly inventive methods prevents “unauthorized copies” and prevent hackers
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`from “forc[ing] the application program to run as an unauthorized copy.” Ex. 1001 at
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`3:30-41, 4:49-53, 5:51-57, 7:13-17.
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`The prosecution history of the ’569 patent confirms that the inventive methods are
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`directed towards preventing unauthorized copying. Specifically, to overcome the
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`examiner’s rejection over a prior art reference (“Houser”), the applicant argued:
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`The Examiner acknowledges that Houser does not teach
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`protection of computer software, but states that it would have
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`been obvious to one of ordinary skill in the art to use the
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`Houser invention for that purpose. . . . Such an approach,
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`however, would not result in the claimed invention. . . .
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`Application of Houser to computer software would [] fail to
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`achieve a significant benefit of the claimed invention;
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`namely, rendering an unauthorized copy of computer
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`software effectively inoperable.
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`Ex. 1002, 7/23/1997 Response to Office Action, at pp. 2-3 (emphasis added).
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`Based on the specification and prosecution history, one of ordinary skill in the art
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`would understand the phrase “copy [protecting/protection of] a software application”
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`to mean “protecting a software application from unauthorized copying or the use of
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`unauthorized copies.” Ex. 1007 at ¶ 38.
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`The Eastern District of Texas entered this same construction in the unrelated
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`litigation, Blue Spike, LLC v. Huawei Techs. Co. et al., Case No. 6:13-cv-00679 (“the
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`Huawei Litigation”). Ex. 1008 at p. 5.
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`Accordingly, Petitioner requests that the Board find the preambles to be limiting
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`and adopt the same construction used in the Huawei Litigation in this proceeding by
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`construing the phrase “copy [protecting/protection of] a software application” to mean
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`“protecting a software application from unauthorized copying or the use of
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`unauthorized copies.”
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`ii.
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`“during execution of the software application” (Claim 16)
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`Claim 16 makes a distinction between loading and execution of the software
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`application. While the preamble of the claim refers to loading (i.e. “plurality of code
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`resources loaded in a memory”), the body of the claim refers to execution (i.e. “during
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`execution of the software application”). These different claim terms are presumed to
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`have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d
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`1324, 1333 n.3 (Fed. Cir. 2006). Therefore, Claim 16 requires the executable code
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`resources to be loaded into memory before the claimed method can be carried out. Ex.
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`1001 at 10:10-12 (“the software application including a plurality of executable code
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`resources loaded in a memory of the computer system.”) The body of Claim 16 then
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`refers to this “software application” and “plurality of executable code resources” and
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`requires “intermittently relocating each of the plurality of executable code resources to
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`a different address within the memory of the computer during execution of the
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`software application.” Ex. 1001 at 10:16-19. Accordingly, the claim requires that the
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`“execution of the software application” takes place after it is loaded into memory and
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`U.S. Patent No. 5,745,569
`the intermittent relocation of the resources take place during the execution while the
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`software application is running.
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`The ’569 patent specification likewise confirms that these requirements are distinct.
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`According to the patent, while the concept of rearranging or relocating code resources
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`in memory was not a new one, operating systems typically performed such rearranging
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`during “system time,” which is after the relevant code resources have been loaded into
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`memory but prior to the execution of the application code: “Once the code resources
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`of a program are loaded into memory, they typically remain in a fixed position unless
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`the computer operating system finds it necessary to rearrange certain portions of
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`memory during ‘system time,’ when the operating system code, not application code,
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`is running.” Ex. 1001 at 7:30-34.
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`Thus, consistent with the language of Claim 16, the specification confirms that the
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`software application is loaded into computer memory first and then during execution
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`of the software application, which takes place after the application is loaded into
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`memory, intermittent relocating of the executable code resources occurs. In other
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`words, the executable code resources are intermittently relocated while the software
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`application is running.
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`In the Huawei Litigation, the phrase “during execution of the software application”
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`was construed to mean “while the software application is running.” Ex. 1008 at p. 6.
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`Petitioner requests that the Board adopt the same construction in this proceeding.
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`U.S. Patent No. 5,745,569
`“intermittently relocating” (Claim 16)
`iii.
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`During prosecution of the ’569 patent, the examiner stated that “it is unclear what is
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`meant by ‘relocating’ and by ‘intermittently relocating’.” See Ex. 1002, 6/26/1997
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`Response to Office Action at p. 7 In response, the applicant made the following
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`admission:
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`Applicants respectfully direct the Examiner’s attention to the
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`disclosure at [Ex. 1001 at 8:1-19] of the Specification, which
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`describes an embodiment of the present invention wherein
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`the code resources are ‘shuffled’ in memory at periodic,
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`random or pseudo-random intervals. See also [Ex. 1001 at
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`3:38-41 of the] Specification, (‘Attempts to tamper or ‘patch’
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`substitute code resources can be made highly difficult by
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`randomizing the location of said resources in memory on an
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`intermittent basis . . .’). Given the foregoing, the Applicant
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`respectfully submits that the language of [application]
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`claim[] 28 would be clear to a person of ordinary skill in the
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`art.
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`Ex. 1002, 6/26/1997 Response to Office Action at p. 7. Application claim 28 issued as
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`independent claim 16 at issue here.
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`U.S. Patent No. 5,745,569
`Applicant’s admission is consistent with the stated object of the ’569 patent. The
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`patent is directed to preventing someone from copying “snapshots” of code located in
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`memory. Ex. 1001 at 7:41-44. Thus, the specification teaches rearranging code
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`resources through the “intentional[] shuffl[ing]” of executable code resources “[d]uring
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`execution time” at “periodic[]” or “random or pseudo-random intervals.” Id. at 8:1-9.
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`This “shuffling” results in a greater difficulty for “someone trying to analyze snapshots
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`[because they] cannot be sure they are looking at the same code or organization from
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`one ‘break’ to the next.” Id. at 8:7-10. Thus, the proposed construction of
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`“intentionally shuffling at random or pseudo random intervals” is consistent with the
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`object of the ’569 patent and therefore should be adopted.
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`Additionally, in the Huawei Litigation, the term “intermittently relocating” was
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`construed to mean “intentionally shuffling at periodic, random, or pseudo-random
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`intervals.” Ex. 1008 at p. 8. Petitioner requests that the Board adopt the same
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`construction in this proceeding.
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`iv.
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`“executable code resources” (Claims 1, 10, 16)
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`The phrase “executable code resources” appears in both the preamble and body of
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`Claims 1, 10, and 16. As two different method steps of Claim 16 center around actions
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`performed in relation to the “executable code resources,” a proper construction of this
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`phrase is necessary to define the scope of Claim 16.
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`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`The specification defines “code resources” in terms of packaged, sub-objects:
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`“subobjects can be packaged into what are referred to as ‘code resources’ . . . .” Ex.
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`1001 at 4:26. “Sub-objects,” as used in the ’569 patent, refer to discrete executable
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`segments of a program. Id. at 3:44-4:17. The specification further explains that an
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`application may be referred to as an “executable object code from the point of view of
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`the engineer.” Id. at 3:44-47. The specification goes on to teach that “[a] collection of
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`smaller, atomic (or indivisible) chunks of object code typically comprise the complete
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`executable object code . . . [t]hose indivisible portions of object code correspond with
`
`the programmers’ function or procedure implementations in higher level languages.”
`
`Id. at 3:47-53. These functions or procedures are compiled and make up an executable
`
`object code (or a program). Id. at 4:13-17. The object code or program includes
`
`instructions executed by the CPU and data called by the instructions. Ex. 1007 at ¶ 50.
`
`The court in the Huawei Litigation construed “executable code resources” to be
`
`“compiled functions or procedures.” Ex. 1008 at 12. Accordingly, Petitioner requests
`
`that the Board adopt the same construction in this proceeding.
`
` Claim-By-Claim Explanation of Grounds for Unpatentability
`
`IV.
`Unpatentability of Claims 1, 10, and 16 of the ’569 Patent is set forth below and
`
`discussed in the accompanying expert declaration (Ex. 1007).
`
`14
`
`
`
`
`
`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`Ground 1. Claims 1, 10, and 16 of the ’569 Patent are unpatentable as
`anticipated by Goldreich (Ex. 1003).
`
`
`
`
`
`Claims 1, 10, and 16 of the ’569 Patent are unpatentable under 35 U.S.C. § 102(b)
`
`as anticipated by Oded Goldreich, Towards a Theory of Software Protection and
`
`Simulation by Oblivious RAMs, 1987 Symposium on Theory of Computing 182-194
`
`(May 1987) (“Goldreich,” Ex. 1003).
`
`i.
`
`Goldreich Is Prior Art Under 35 U.S.C. § 102(b)
`
`Goldreich was included in the proceedings distributed at the 1987 Symposium on
`
`Theory of Computing (“STOC”) sponsored by the Association for Computing
`
`Machinery (“ACM”), which was held in May 25-27, 1987 in New York, New York.
`
`As shown on Page ii of Goldreich, the proceedings bear a 1987 copyright date, with an
`
`International Standard Book Number (“ISBN”) 0-89791-221-7, which reflects a
`
`copyright date of June 1987. (See http://www.isbnsearch.org/isbn/0897912217). Page
`
`182 of Goldreich also includes a 1987 copyright date, the same ISBN, and a price. The
`
`Board has found the copyright information on technical journal articles, such as that
`
`compiled and published by ACM, to be sufficient to establish that Goldreich was
`
`published and publicly available no later than December 31, 1987. Ericsson Inc. v.
`
`Intellectual Ventures I LLC, IPR2014-00527, Paper 41, at 10-11 (P.T.A.B. May 18,
`
`2015). Moreover, as shown on the cover page of Goldreich, the Library of Congress
`
`stamp indicates that it was received by the Library on February 12, 1989, which is
`
`15
`
`
`
`
`
`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`more than five years before the critical date of the ’569 patent. Accordingly,
`
`
`
`
`
`Goldreich constitutes a printed publication and is prior art under Section 102(b).
`
`ii.
`
`Goldreich Discloses All Elements of Independent Claims 1, 10, and 16
`
`Independent claims 1 and 10 of the ’569 patent are directed towards a method of
`
`“watermarking” code, or embedding code resources into aspects of the code sought to
`
`be protected from unauthorized copying. Independent claim 16 is directed to the
`
`process of “intermittently relocating” aspects of the code in the computer memory in
`
`order to provide a measure of “copy protecting”.
`
`Goldreich discloses a method of protecting a software application from illegitimate
`
`or unauthorized copying. Ex. 1003 at p. 182. One of ordinary skill would understand
`
`this to be a type of copy protection as claimed by Claims 1, 10, and 16, consistent with
`
`the proposed construction. Ex. 1007 at ¶ 54.
`
`Goldreich discloses use of an oblivious Random Access Machine (“RAM”) model
`
`of computation. Ex. 1007 at ¶ 55. One of ordinary skill would understand the
`
`oblivious RAM model of computation to be a model of computation by which an
`
`operating system runs software applications. Ex. 1007 at ¶ 56. Moreover, one of
`
`ordinary skill would understand the plurality of code resources disclosed in Definition
`
`5 to be applicable to any software application. Ex. 1007 at ¶ 58.
`
`Goldreich discloses mapping portions of the executable code to registers of the
`
`oblivious RAM. Ex. 1003 at p. 188, Sec. 3. One of ordinary skill would understand
`
`16
`
`
`
`
`
`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`that the oblivious RAM registers can be used for guarding against unauthorized
`
`
`
`
`
`copying by either embedding code resources into the computer software (Ex. 1003 at
`
`p. 184), as claimed by Claims 1 and 10, and/or by intermittently relocating, or
`
`intentionally shuffling, the code resources within the executable code (Ex. 1003 at p.
`
`192), as claimed by Claim 16. See Ex. 1007 at ¶ 60.
`
`Each of the elements of Claims 1, 10, and 16 of the ’569 Patent is disclosed and
`
`described by Goldreich, as shown with particularity as follows.
`
`Goldreich (Ex. 1003)
`Goldreich discloses computer software to protect
`against unauthorized copying:
`“[T]he problem of protection against illegitimate
`duplication.” Ex. 1003 at p. 182; Ex. 1007 at
`p. 24.
`
`Goldreich discloses a software application that in
`its compiled form is divided into two parts: the
`first part contains the program instructions and the
`second part contains the data resources. Thus
`Goldreich teaches one or more compiled functions
`or procedures, including executable code (the first
`part) and a non-executable digital sample (the
`second part):
`“The input to the memory (y) is partitioned (by a
`special symbol) into two parts called the program
`(denoted here as π) and the data (denoted as x).
`The output of the memory (on input y-(π, x)), after
`interacting with the CPU, is denoted π(x) and
`called the result of π’s computation on input x.”
`Ex. 1003 at p. 187 (Definition 5 (programs, data,
`and computations)); Ex. 1007 at p. 24.
`Goldreich discloses identifying a portion of the
`executable code by identifying the memory
`addresses relating to the portion of the executable
`17
`
`The ’569 Patent
`1. A method for copy
`protection of computer
`software, the computer software
`including executable code and a
`non-executable digital sample,
`said method comprising the
`steps of:
`
`(a) identifying a portion of the
`executable code to be
`encoded:
`
`
`
`
`
`
`
`
`
`Goldreich (Ex. 1003)
`
`code:
`“Simulate sqrt(m) memory accesses of the original
`RAM. During the simulation we maintain the
`values previously retrieved (during the current
`execution of step (2)!) in locations m+sqrt(m) + 1
`through m+2 sqrt(m) A memory access of the
`original RAM, Say an access to cell i, is simulated
`as follows. First we scan through the special
`sqrt(m) cells and check whether the contents of the
`original i –th cell is in one of these cells. If the i th
`cell is not found there then we retrieve it from cell
`π(i); else we access the next empty cell (i.e. one of
`the original cells m + 1 through m+sqrt(m) which
`was not accessed before).”
`Ex. 1003 at p. 190; Ex. 1007 at p. 25.
`Goldreich discloses generating an encoded, or
`encrypted, code resource from the identified
`portion of executable code:
`“On input n (in unary) algorithm G outputs a
`(legal) key K of length n. On input a key K and a
`message M, algorithm E randomly selects an
`encryption denoted EK(M), such that
`DK(EK(M))=M. Loosely speaking, we say that the
`encryption scheme is secure if on input n (in
`unary), and the messages M1 and M2, their
`probabilistic encryptions EK(M1) and EK(M2)
`(where K=G(n) are polynomially indistinguishable
`(even when given access to a black box
`implementing EK).”
`Ex. 1003 at p. 187; Ex. 1007 at p. 25.
`Goldreich discloses embedding the encoded
`resource in the digital sample using encryption:
`“The first issue is to hide from the adversary the
`values stored and retrieved from memory, and to
`prevent the adversary’s attempts to change these
`values. This is done by an innovative use of
`traditional cryptographic techniques (e.g.
`probabilistic encryption [GM] and message
`authentication [GGM]).” Ex. 1003 at p. 184; Ex.
`18
`
`Petition For Inter Partes Review
`U.S. Patent No. 5,745,569
`The ’569 Patent
`
`(b) g
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