`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`GOOGLE, INC.
`Petitioner,
`
`v.
`
`UNILOC USA, INC.
`Patent Owner
`
`______________
`
`Case IPR2017-01665
`U.S. Patent 8,566,960
`______________
`
`DECLARATION OF DR. VAL DIEULIIS
`
`
`
`OCTOBER 18, 2017
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 4
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`2. QUALIFICATIONS ...................................................................................... 5
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 8
`
`4. INFORMATION CONSIDERED ...............................................................10
`
`5. LEGAL STANDARDS .................................................................................10
`
`6. THE ’960 PATENT ......................................................................................12
`
`6.1 Ordinary Skill in the Art ........................................................................ 22
`6.2 Claim Construction ................................................................................ 23
`6.2.1 A POSITA would have understood the preambles
`of claims 1 and 22 teach “adjusting a license” that
`includes an “allowed copy count” ............................................... 24
`6.2.2 “a first time period after an initial authorization of
`the digital product” (claim 25) .................................................... 28
`
`7. U.S. PATENT NO. 7,047,411 (“DEMELLO”) ............................................29
`
`8. IRISH PATENT APPLICATION NO. 02/0429 (“STARUIALA”) ...........31
`
`9. U.S. PATENT NO. 7,962,424 (“COLOSSO”) .............................................34
`
`10. DEMELLO IN VIEW OF STARUIALA FAILS TO RENDER
`OBVIOUS ANY CHALLENGED CLAIM OF THE ’960
`PATENT .......................................................................................................35
`
`10.1 The proposed combination DeMello and Staruiala fails to
`render obvious “verify that a license data associated with
`the digital product is valid based at least in part on a
`device identity generated by sampling physical
`parameters of the given device” ............................................................. 36
`10.1.1 Staruiala fails to remedy the deficiencies in
`DeMello ..................................................................................... 42
`10.1.2 Colosso fails to remedy the deficiencies in the
`proposed combination of DeMello and Staruiala ........................ 43
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`10.2 DeMello fails to disclose or render obvious “in response
`to the device identity not being on the record, set the
`allowed copy count to a first upper limit for a first time
`period” ................................................................................................... 48
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
`
`1.
`
`1.
`
`Introduction
`
`My name is Val DiEuliis, and I have been retained by
`
`Uniloc USA, Inc. (“Uniloc” or the “Patent Owner”). My client Uniloc
`
`and its associated counsel, Etheridge Law Group, have asked me to study
`
`U.S. Patent No. 8,566,960 (“the ’960 patent”), the Petition, the proffered
`
`prior art in this case, and other relevant documents. I document my
`
`findings in this declaration.
`
`2.
`
`I have concluded that U.S. Patent No. 7,047,411
`
`(“DeMello”) [EX1004], alone or in view of Irish Patent Application
`
`IE 02/0429 (“Staruiala”) [EX1005] and U.S. Patent No. 7,962,424
`
`(“Colosso”) [EX1006], does not render obvious any challenged claim of
`
`the patent at issue, the’960 patent, at least for the following reasons:
`
`• The proposed combinations of prior art do not disclose “verify that
`
`a license data associated with the digital product is valid based at
`
`least in part on a device identity generated by sampling physical
`
`parameters of the given device”
`
`• A POSITA on the priority date would not have been motivated to
`
`combine Colosso with DeMello and/or Staruiala because Colosso
`
`and DeMello disclose significantly different, and mutually
`
`exclusive, approaches to the licensing problem.
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`
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`3.
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`• Even if combined, the proposed combinations do not disclose “in
`
`response to the device identity not being on the record, set the
`
`allowed copy count to a first upper limit for a first time period, the
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`allowed copy count corresponding to a maximum number of
`
`devices authorized to use the digital product”
`
`The limited scope of my opinions and analysis in this
`
`declaration do not imply that I may not later express other opinions or
`
`report other results from other investigations concerning other issues
`
`raised by the Petitioner or its experts in this IPR.
`
`2.
`
`4.
`
`Qualifications
`
`I am an electrical engineer with over 45 years of experience
`
`developing, programming, and analyzing computer algorithms and
`
`software. I am experienced with and able to create, read, and interpret
`
`firmware and software in C, C++, Java, assembly language, HTML, and
`
`other computer programming languages. I have served as an expert
`
`witness in multiple cases for which I analyzed computer source code in
`
`various languages and testified at ITC hearings and two jury trials
`
`concerning my results.
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`
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`5.
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`During my career, I have developed and managed projects
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`for various applications, including sensors, controls, communications,
`
`user interfaces, device firmware, handheld devices, medical devices and
`
`systems, and test systems for optical and magnetic disk systems.
`
`6.
`
`As a graduate student at the University of Illinois at
`
`Urbana-Champaign, I obtained extensive training in the complexity of
`
`algorithms; the complexity of databases; information theory;
`
`combinatorics and combinatorial algorithms; and the mathematics and
`
`algorithms of error correcting codes, a field closely related to
`
`cryptography. In addition, as a part of my graduate research, I created and
`
`developed heuristic algorithms and wrote software to synthesize
`
`non-linear codes for optimizing the spectra of coded digital
`
`communications signals.
`
`7.
`
`I received the Ph.D. and M.S. degrees in electrical
`
`engineering from the University of Illinois at Urbana-Champaign in 1978
`
`and 1976, respectively, and the B.S. degree in electrical engineering from
`
`the University of Notre Dame in 1972. I am a Registered Professional
`
`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
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`
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`of the Institute of Electrical and Electronics Engineers. Additionally, I am
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`a co-inventor of two patents.
`
`8.
`
`I have been an independent engineering consultant, doing
`
`business as Electronics Consultants, since 1984. My clients have
`
`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
`
`among others. Prior to that, I worked as a research engineer for the 3M
`
`Company in St. Paul, Minnesota for five years. Prior to my graduate
`
`studies, I worked as an electrical engineer in the U. S. Army with the
`
`U.S. Army Security Agency for two years, during which time I held a
`
`Top Secret W/Crypto and SI Access security clearance.
`
`9.
`
`As an adjunct instructor at the University of Saint Thomas in
`
`St. Paul, Minnesota, I developed and presented a lecture on classical
`
`linear control theory for graduate students, developed and taught a
`
`graduate course on computer networks, and taught an undergraduate
`
`analog and digital electronics course to mechanical engineering students.
`
`10.
`
`This and other information about my background is included
`
`in my CV, which is attached to this declaration as Attachment A.
`
`
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`3.
`
`11.
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`Compensation, Testimony, and Publications
`
`I am being paid $440 per hour for the time I spend working
`
`on this matter. My compensation is not contingent on my performance,
`
`the outcome of this IPR, or any issues involved in or related to this IPR.
`
`12.
`
`During the past four years, I have testified at trial, hearing,
`
`or deposition in the following cases:
`
`• Cisco Systems, Inc. v. Uniloc Luxembourg S.A.; US PTO Inter Partes
`
`Reviews IPR2017-00058 and IPR2017-00198. Testifying expert in two
`
`Inter Partes Reviews of patents related to systems to facilitate voice
`
`conferences. I testified at a deposition.
`
`• Facebook, Inc. and Whatsapp, Inc. v. Uniloc USA et al.; US PTO Inter
`
`Partes Review IPR2017-01756. Testifying expert in an Inter Partes
`
`Review of a patent related to systems to facilitate voice conferences. I
`
`testified at a deposition.
`
`• Terremark North America, LLC, et al. v. Joao Control &
`
`Monitoring LLC.; US PTO Inter Partes Review IPR2015-01466;
`
`Joao Control & Monitoring on behalf of Joao Control &
`
`Monitoring; 2016. I testified at a deposition.
`
`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
`
`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
`
`2016. I testified at a deposition.
`
`
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`• Sega of America, Inc. et al. v. Uniloc USA et al.; USPTO Inter
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`Partes Review; IPR 2014-01453; Uniloc USA on behalf of Uniloc
`
`USA, 2015. I testified at a deposition.
`
`• Uniloc USA et al. v. Activision Blizzard et al.; United States
`
`District Court for the Eastern District of Texas (Tyler); Civil
`
`Action No. 6:13-cv-00256-LED; and Uniloc USA v. Electronic
`
`Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson Bumgardner
`
`Casto and Carter, Scholer, Arnett, Hamada, and Mockler on behalf
`
`of Uniloc USA et al.; 2013-2014. I testified at three depositions
`
`and a jury trial.
`
`• In the Matter of Certain Optical Disc Drives, Components thereof,
`
`and Products Containing Same; U.S.I.T.C. Investigation No. 337-
`
`TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
`
`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
`
`Lenovo, Greenberg Traurig on behalf of LG Electronics,
`
`McDermott Will & Emery on behalf of Nintendo and Panasonic,
`
`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
`
`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
`
`deposition.
`
`
`13.
`
`
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`I have had no publications in the past 10 years.
`
`
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`4.
`
`14.
`
`Information Considered
`
`In order to arrive at my opinions, I have reviewed and
`
`considered the materials listed below:
`
`• Petition for Inter Partes Review of United States Patent No.
`
`8,566,960, and its exhibits, Case No. IPR 2017-01665,
`
`June 30, 2017 [Pet.]
`
`• U.S. Patent No. 8,566,960 (the ’960 patent; Richardson) [EX1001]
`
`• Prosecution History of U.S. Patent No. 8,566,960 [EX1002]
`
`• Declaration of Anthony J. Wechselberger, June 30, 2017 [EX1003]
`
`• U.S. Patent No. 7,047,411 (“DeMello”) [EX1004]
`
`• Irish Patent Application IE 02/0429 (“Staruiala”) [EX1005]
`
`• U.S. patent No. 7,962,424 (“Colosso”) [EX1006]
`
`• Decision Denying Institution of Inter Partes Review,
`
`IPR2016-01271, January 9, 2017 [EX1007]
`
`• Patent Owner Preliminary Response to Petition, IPR201-00948,
`
`June 13, 2017 [EX1008]
`
`Legal Standards
`
`I understand there are certain legal rules, standards, or
`
`5.
`
`15.
`
`requirements that I accept for the purpose of my analysis of the opinions
`
`and conclusions set forth in this declaration.
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`16.
`
`I understand a patent is obvious “if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
`
`determination must be based on four factual inquiries: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
`
`of nonobviousness.
`
`17.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the prior art, the claim cannot be considered obvious.
`
`18.
`
`I further understand that it is improper to combine references
`
`where the references teach away from their combination. A prior art
`
`reference teaches away from the claimed invention when a person of
`
`ordinary skill, upon reading the reference would be led in a direction
`
`divergent from the path that was taken by the applicant. Prior art also
`
`teaches away when it criticize[s], discredit[s], or otherwise discourage[s]
`
`investigation into the claimed invention. Additionally, a reference teaches
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`away from a combination when using it in that combination would
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`produce an inoperative result. A reference also teaches away from a
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`combination when using it in that combination would render the
`
`invention described in the reference unsatisfactory for its intended
`
`purpose.
`
`19.
`
`In addition, I understand that if a proposed modification or
`
`combination of the prior art would change the principle of operation of
`
`the prior art device being modified, then the teachings of the references
`
`are not sufficient to render the claims prima facie obvious.
`
`6.
`
`20.
`
`The ’960 Patent
`
`The ’960 patent is generally directed to “managing software
`
`use, and more specifically to systems and methods to enable the
`
`monitoring and adjusting [of] software usage under a software license.”
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`EX1001 at 1:17-20 (Field of the Invention).
`
`21.
`
`In the ’960 patent, a “license” applies to a specific digital
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`product (e.g., software) and is not tied to a specific person. The license
`
`allows a certain number of machines to run the digital products at any
`
`time. The number of allowed copy counts may conditionally adjust over
`
`time based on the license terms and on the discretion of the publisher or
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`distributor of the product. An important aspect of the ’960 patent is the
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`way in which the identities of the machines are determined so that the
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`licensing authority is able to keep track of the number of authorized
`
`machines.
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`22.
`
`During prosecution, the Applicant offered the following
`
`overview of the '960 Patent:
`
`The present application (“Richardson”) discloses
`
`an invention for a system that automatically
`
`adjusts usage limitations on licensed software.
`
`The adjustable license is based on exploitation of
`
`an advanced technique for generating a “device
`
`fingerprint” or “device identifier” for each of many
`
`computers that a single licensee may use to
`
`execute the licensed software. The device
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`identifier uniquely identifies each computer so
`
`that the licensing system can keep an accurate
`
`count of the number of computers authorized to
`
`use the software under any particular license.
`
`Unlike other software licensing schemes, the
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`Richardson system anticipates that a licensee’s
`
`number of computers and computer
`
`configurations will change over time, and
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`therefore implements a method for allowing such
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`changes to occur without the user having to
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`relicense the software, and without allowing
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`unauthorized use of the software to run out of
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`control.
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`(EX1002 at 244) (Emphasis added.)
`
`23.
`
`Consistent with that overview, the '960 Patent describes that
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`consumers who license use of a digital product typically exhibit a pattern
`
`of usage that includes use of the digital product on multiple devices.
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`EX1001 at 1:31-41. Conventionally, publishers and digital owners have
`
`limited the license to a predefined number of devices. This scheme
`
`fails to consider normal addition and attrition that occurs during the
`
`life of the licensed product. Such attrition and addition include, for
`
`example, the addition of new devices or replacement of older devices
`
`with new ones. The conventional method further requires the user to
`
`go through several tedious steps to retain its right to use the licensed
`
`product or to transfer these rights from one device to another device.
`
`Id. at 1:61-2:2.
`
`24.
`
`Publishers of digital products, however, do not want to
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`inconvenience their bona fide customers with tedious re-licensing
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`procedures. On the other hand, they want to protect themselves from
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`software pirates and other abusers of licenses who share or sell the copied
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`products to other people. Id. at 1:42-48. This dilemma between protection
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`from pirates versus bona fide customer service motivated the invention of
`
`the ’960 patent.
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`25.
`
`To address these and other shortcomings, the '960 patent
`
`teaches that certain embodiments are configured to automatically adjust
`
`device limits of a license in response to certain detected conditions.
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`These adjustments may be determined by fixed rules or algorithms.
`
`Id. at 5:20-7:5.
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`26.
`
`In certain embodiments, the adjustment is designed “to
`
`accommodate a reasonable small increase in the number of devices
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`linked to a specific license ….” Id. at 3:63-4:2. According to one
`
`example, a “license may state that the publisher authorizes the user to use
`
`their software on up to, for example, five devices, but that the publisher
`
`reserves the right to increase this limit at their own discretion.”
`
`Id. at 3:48-51. Within weeks after the purchase of the digital product
`
`(e.g., software) the licensed user reasonably may seek to exceed the five-
`
`device limit by one. Id. 3:52-63. The '960 Patent discloses that the sixth
`
`uniquely-identified device requesting to operate the software “may be
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`allowed to run even though the publishers stated device limit per license
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`is five.” Id. at 3:63-4:2.
`
`27.
`
`In another embodiment, the '960 Patent teaches that certain
`
`circumstances may warrant temporarily decreasing the discretionary limit
`
`allowed for in the license, such as upon detection of individual instances
`
`of copy abuse. See, e.g., Id. at 6:34-40.
`
`28.
`
`The above examples from the '960 Patent may be
`
`summarized at a high level as follows. In certain situations, the publisher
`
`may design its system to automatically apply a temporary “grace period”
`
`upon detection of certain conditions, during which time a reasonable
`
`number of additional copy count(s) may also be allowed to run. In
`
`addition, the publisher may design its system to automatically apply a
`
`heightened security period in response to certain detected conditions
`
`(e.g., detection of suspected illicit copying), during which time the
`
`allowed copy count is decreased.
`
`29.
`
`With respect to FIG. 2, the '960 patent teaches, in certain
`
`embodiments, a system and method to determine whether a machine is
`
`authorized to use the digital product. Those determinations include, for
`
`example, verifying at Licensing Authority 55 the validity of information
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`collected at, and received from, the device 50 requesting authorization.
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`Id. at 4:56-64; 7:1-4; see also Figure 2 (steps 10-13). If the validity check
`
`fails, the digital product is not allowed to run and the process terminates.
`
`Id. at 4:62-64; see also FIG. 2 (step 14).
`
`30.
`
`If the license validity check described above passes, the
`
`Licensing Authority 55 checks the identity information of the requesting
`
`device to see if it currently exists in a database of authorizations. Id. at
`
`5:1-5; see also Figure 2 (step 15). If the identity information is presently
`
`on record, authorization of the digital product is automatically allowed.
`
`Id. at 5:5-9; 7:6-8; see also Figure 2 (steps 16-18). However, if the
`
`identity information is not presently on record (e.g., the disclosed
`
`example where a licensed user newly seeks to run a digital product on a
`
`sixth device even though the publisher’s stated device limit per license is
`
`five), then the allowed copy count may be adjusted for a limited time to
`
`accommodate what is determined to be a reasonable and legitimate
`
`request. Id. at 3:63-4:2.
`
`31.
`
`Figures 3A and 3B present a flow diagram for an
`
`embodiment of the process 300 of checking and adjusting a license over
`
`time for a software product. Figure 3A, reproduced below, shows the
`
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`process for the initial time period after the initial authorization of a digital
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`product.
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`Figure 3A of the ’960 Patent: Process Flow
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`32.
`
`The method 300 in Figure 3A above receives “a request for
`
`authorization to use the digital product on a given device (step 310).”
`
`Id. at 6:66-7:2. The example embodiment illustrated in Figure 3A may be
`
`summarized, in part, in list form as follows:
`
`• A user wishes to run a software product on one of her devices (e.g.,
`
`a computer, phone, etc.).
`
`• The software sends a request to the Licensing Authority (see
`
`FIG. 2), which receives the request (step 310 of FIG. 3A). Id.
`
`• The Licensing Authority verifies that license data that is included
`
`in the authorization request is valid (step 320). Id. at 7:2-5.
`
`• If the license data verification is successful (i.e., the license is
`
`valid), the Licensing Authority checks to determine if the specific
`
`device requesting use is already in the database (viz., authorized).
`
`Id. at 8:5 (“The record may comprise an authorization database.”).
`
`• If the device identity is in the database then allow the digital
`
`product to be used on the device (step 330). Id. at 7:6-8. This ends
`
`the process for a previously authorized device.
`
`• If the device identity is not in the database, the Licensing Authority
`
`sets the allowed copy count to a first limit for a first time period
`
`(step 340). Id. at 7:8-12.
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`• The Licensing Authority calculates a device count
`
`1
`
` (that is, it
`
`determines the number of devices authorized to use the product)
`
`(step 350). Id. at 7:12-14.
`
`• If the calculated device count does not exceed the copy count, the
`
`Licensing Authority allows the digital product to be used on the
`
`new device requesting authorization (step 360). In other words, the
`
`requesting device is now authorized to use the product.
`
`Id. at 7:15-17.
`
`
`
`33.
`
`In this investigation and declaration, I focus on two
`
`limitations in the challenged independent claims 1, 22, and 25.
`
`34.
`
`First, independent system claim 1and independent method
`
`claim 22 recite the following two limitations:
`
`in response to the device identity not being on the
`
`record, set[setting] the allowed copy count to a
`
`first upper limit for a first time period, the allowed
`
`
`
`1
`
` The device count is different from copy count. The allowed copy count
`
`is a variable in the authorization process 300 that represents the number
`
`of available authorizations at any given time, while the device count
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`denotes the number of devices that have already been authorized to use
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`the licensed digital product.
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`copy count corresponding to a maximum number
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`of devices authorized to use the digital product;
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`verify that a license data associated with the digital
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`product is valid based at least in part on a device
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`identity generated by sampling physical
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`parameters of the given device
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`35.
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`Second, independent computer program product claim 25
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`recites the following two limitations, which are very similar to the two
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`limitations from claims 1 and 22 with underline showing differences:
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`code for causing a computer to, in response to the
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`device identity not being on the record, set the
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`allowed copy count to a first upper limit for a first
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`time period after an initial authorization of the
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`digital product, the allowed copy count
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`corresponding to a maximum number of devices
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`authorized to use the digital product
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`code for causing a computer to verify that a license
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`data associated with the digital product is valid
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`based at least in part on a device identity generated
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`by sampling physical parameters of the computer
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`36.
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`All other claims are dependent on either claim 1 or 22,
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`independent claims cited above. Hence, all challenged claims recite the
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`limitations reproduced above.
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`6.1
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`37.
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`Ordinary Skill in the Art
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`In my opinion, a person of ordinary skill in the art would
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`have possessed on the priority date
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`2
` a bachelor’s degree, or equivalent, in
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`electrical engineering or software engineering, or a closely related field;
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`and one to two years of experience in software development; or the
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`equivalent work experience.
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`38.
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`The Petitioner defines a person of ordinary skill in the art as
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`someone who would have had a “bachelor’s degree in computer science
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`and/or electrical engineering or comparable experience, at least two years
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`of experience in software development. Pet. at 8; see also
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`EX1003 at ¶ 17.
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`2
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` I understand the Patent Owner claims a priority date of
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`November 17, 2007, and I am unaware of any dispute over this. See e.g.,
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`EX1008 at 6-7; EX1003 at 31; Pet. at 4.
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`39.
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`In my opinion, my and the Petitioner’s opinion concerning a
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`person of ordinary skill in the art are essentially the same, and any
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`differences are inconsequential to the dispute before the Board.
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`40.
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`Based on my training in electrical engineering, which
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`included significant training in software development, and my 45-plus
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`years of experience, including much software development, I have
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`considerably more experience and expertise than the POSITA, as defined
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`by the Petitioner, Mr. Wechselberger, or me. I base my opinions
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`regarding the level of ordinary skill in the art upon this understanding and
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`my own experience in the field. I have considered the way in which a
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`POSITA would have understood the ’960 patent on its priority date, and I
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`offer my opinions on that basis.
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`6.2
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`41.
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`Claim Construction
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`The Petitioner acknowledges that a claim subject to IPR is
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`given its “broadest reasonable construction in light of the specification.”
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`Pet. at 8; also EX1003 at ¶ 19. I interpret the claims according to the
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`broadest reasonable construction standard. In addition, I provide some
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`clarifying discussion below.
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`6.2.1
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`42.
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`A POSITA would have understood the preambles of
`claims 1 and 22 teach “adjusting a license” that includes
`an “allowed copy count”
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`With respect to challenged claims 1 and 22, the Petitioner
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`asserts that “claim 1’s preamble merely sets forth a purpose and intended
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`use of the system described in the body of the claim, and therefore is not
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`limiting.” Pet. at 18; see also EX1003 at ¶ 63. I disagree and explain
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`below.
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`43.
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`First, the Petitioner’s expert, Mr. Wechselberger, states
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`“even if [the] preamble of the claim was deleted, a POSITA would see no
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`effect on the system structure and operations described by the claim.” Id.
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`I disagree because the preamble clearly recites structure: “a system for
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`adjusting a license, the license comprising at least one allowed copy
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`count corresponding to a maximum number of devices authorized for
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`use with the digital product.” EX1001 at 11:7-8 (claim 1); also 13:32-34
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`(claim 22) (emphasis added). The preamble language cited above recites
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`that a “license” includes a structure (viz., an allowed copy count), and
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`that the claimed system adjusts the license. The body of the claim recites
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`“set the allowed copy count to a first upper limit for a first time period,”
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`which, without the preamble, provides no context for the “allowed copy
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`count,” and the POSITA would not be able to know that the “allowed
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`copy count” was a structural element of a license for a digital product.
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`Moreover, the preamble provides the context of the “allowed copy count”
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`as “corresponding to a maximum number of devices.” Furthermore,
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`without the preamble, the POSITA would not be informed that the “set”
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`refers to “adjust” because the preamble teaches the preamble that the
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`setting of the allowed copy count is an adjustment to an element of a
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`license. For at least the reasons I provide above in this paragraph, I
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`disagree with Mr. Wechselberger’s statement concerning the preamble,
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`and in my opinion, the preamble adds structure and operational life to the
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`claim.
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`44.
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`Second, as the Petitioner and Mr. Wechselberger assert, if
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`the preamble merely indicates a purpose and intended use of the system
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`described in the body of the claim, in my opinion, a POSITA would not
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`have been able to understand the connection between the copy count in
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`the body of the claim and a license for a digital product, because this
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`connection is not recited in the body of the claim. Thus, in my opinion,
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`lacking the preamble, a POSITA would not have understood the intended
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`purpose of the system described in the body of the claim was “adjusting a
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`license for a digital product.”
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`45.
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`Third, as I explained above in ¶¶ 20-22, the Patent Owner,
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`during the prosecution of the application that led to the ’960 patent,
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`expressly explained that the invention is directed towards adjusting the
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`terms of the license and that the adjustment particularly relates to the
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`management of the number of devices allowed to use a digital product,
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`including changing the number of allowed devices “without the user
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`having to relicense the software.” EX1002 at 244 (reproduced at ¶ 22
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`above) (emphasis added).
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`46.
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`Fourth, a POSITA would have understood upon reading the
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`claim and the totality of the ’960 patent that “an allowed copy count” as
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`recited in the preamble refers to a variable that would be instantiated in
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`the software and initialized by allocating memory to store it and by
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`initializing it with some value. When the copy count is “set” according to
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`the limitation in the body of claims 1 and 22, a POSITA would have
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`understood that the current value of the copy count is changed to another
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`value. Based on the written descriptions and specifically Figure 3A of the
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`’960 patent, at step 340, FIG. 3A explains that if a device identity is not
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`on the record, which occurs the first time an authorization is requested by
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`a device according to the embodiment of FIG. 3, then “set the allowed
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`copy count to a first upper limit for a first time period after an initial
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`authorization of the digital product.” EX1001 at FIG. 3A. A POSITA
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`would have understood that this figure and its accompanying text
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`explains the “set” that takes place at step 340 is the adjustment of the
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`value that was initialized (when the program began execution) to a new
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`value that corresponds to the “first upper limit” that applies directly after
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`the first authorization of the digital product.
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`47.
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`Fifth, the bodies of claims 1 and 22 recite “the digital
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`product” and “the allowed copy count.” Without any antecedent basis, a
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`POSITA would not be able to ascertain the scope of these limitations.
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`The preamble provides the antecedent basis by reciting “for adjusting a
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`license for a digital product comprising at least one allowed copy count.”
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`EX1001 at 11:57-60 (claim 1 preamble) and 13:31-34 (claim 22
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`preamble) (Emphasis added.). Thus, in my opinion, the preambles of
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`claims 1 and 22 are necessary to provide the antecedent basis for the